TOL Patent Bar Outline
TOL Patent Bar Outline
TOL Patent Bar Outline
101: General
Information NOT Available to the Public: Generally, no information concerning pending or abandoned
applications may be made available to the public without authorization of the applicant, the assignee of
record, or the agent or attorney of record.
o Exceptions:
• Applications that have been published
• Reissue applications
• Reexamination proceedings
Implication of Timing on Availability of Certain Information: If the publication or issue date is later than the
current date, information about the publication date (or number) or the issue date may ONLY be given to
the applicant, the assignee of record, or agent or attorney of record.
103: Right of Public to Inspect Patent Files and Some Application Files (37 § CFR 1.11, 1.14)
Since June 30, 2003, all new applications are stored as official records in an electronic system as an
Image File Wrapper (IFW).
If a patent application has been published, all documents relating to the file of the application (whether
abandoned or pending) are open to the public upon request. If the published application is a redacted
copy, then access will be limited to the redacted version. (37 CFR § 1.14; Patent Applications Preserved
in Confidence)
The following unpublished abandoned applications are available to the public:
o An abandoned application referred to in a US patent application publication or a US patent;
o A pending File Wrapper Continuation application filed under former 37 CFR § 1.62 (File Wrapper
Continuing Procedure) of an abandoned application that meets the requirements of 37 CFR §
1.14.
1
‘Entitled’ individuals is not a term used by the PTO, but rather it is used in this outline to identify the group: inventor, attorney or agent in the
application, assignee of record, or a person granted permission from one of these three individuals.
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Where only part of an application is incorporated by reference, a non-‘entitled’ requestor must petition for
access to or a copy of the incorporated material.
Any party may Petition for Access to a patent application.
o Filing requirements for each application to which access is desired:
• Petition for Access – File under 37 CFR § 1.14(h), showing why access is desired and
why petitioner believes s/he is entitled to access.
• Proof of Service – Proof that such petition has also been served to the applicant (or
assignee or attorney/agent of record) or a duplicate of the petition that the PTO can
forward to the applicant, and
• Filing fee
Provisional applications are generally only available to a member of the public who has received
permission from an entitled person. However, like other applications, provisionals may be available
through public PAIR if the application is relied on for priority in a US patent.
All reissue documents are open to public inspection under 37 CFR § 1.11(b) (Files Open to the Public).
o The filing of the reissue application will be public in the Official Gazette.
Documents associated with Requests for Reexamination are made available to the public once they are
scanned into the reexamination database.
o Completed requests for reexamination are published in the Official Gazette.
The Board of Patent Appeals and Interferences (BPAI) handles all requests for application documents
involved in interferences.
2
Note that all issues of appeal go the BPAI and all procedural issues go to the Office/Director of Petitions. This distinction is likely to be tested
on the Patent Bar.
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Continuation 1.53(b) & (d) At least one No Co-pending Small entity status
202: Cross-Noting
Notation in File History Regarding Prior US Applications, Including Provisional Applications
o The first page of a printed patent will identify all prior applications for which benefit is claimed. A
patent owner should ensure that this information is correct. However, the inclusion of this
information does not necessarily mean that the claims are entitled to the benefit of the earlier filing
date.
Introduction:
Ownership belongs to whoever has the controlling interest in a patent or a patent application (corporation or
individual(s)).
o Patents may be bought and sold like property.
o There may be multiple assignees, and each must record ownership with the PTO in order to take action on
the patent.
Inventorship is a legal definition of the true inventors of a patent and may only be one or more individuals (never a
corporation).
o Inventorship can never be transferred; however, an inventor may lose control of a patent/application by
assigning his ownership to another entity.
301: Ownership/Assignability of Patents and Application
Ownership
o Ownership of a patent gives one the right to exclude others from making, using, offering for sale, selling, or
importing the invention (it does not give one the right to do these things).
o Ownership initially vests in the inventor(s) of the patented subject matter.
o The patent or application may be transferred, like property, by written assignment.
Assignment
o Under 37 CFR § 3.1 (Definitions), assignment of “patent rights” is defined as “a transfer by a party of all or
part of its right, title and interest in a patent or patent application…”
o Either the entirety or a percentage of one’s patent rights may be assigned.
Licensing
o Unlike assignment, licensing refers to less than the total bundle of patents rights. Licensing may have
restrictions on time, geography or area of use.
Individual Ownership
o May be an individual or an entity.
o An assignee of entire interest (such as a corporation) that has received the sum of an entire assignment
from more than one inventor (or other prior owners) is an individual owner.
Joint Ownership
o More than one person or entity may share the interests in a patent/application. This occurs when:
• There are multiple partial assignees of the patent property;
• There are multiple inventors who have not assigned their right, title and interest; or
• A combination of the above.
Making the Assignment of Record
o An assignment can be made in two ways, for two different purposes:
• The assignment can be made of record in the PTO, and this provides public notice of the
assignment.
Note: This act of recording is not a determination by the PTO of the validity of the
assignment. Also, this act alone does not, by itself, give the assignee right to take action
on a patent, application or other proceeding.
• The assignment can be made of record in the file of the patent, application, or other patent
proceeding, and this step permits the assignee to take action in the patent, application or other
proceeding (37 CFR § 3.73; Establishing Rights of an Assignee to Take Action).
Accessibility of Assignment Records
o Assignment documents relating to patents and published patent applications are open to the public.
o The Office will not open only certain parts of an assignment document to public inspection. If such a
document contains two or more items and one is open to inspection, then the entire document will be
opened*.
o Under 37 CFR § 1.14, assignment records of an earlier application will be open to the public because
access may be granted to the earlier application when the offspring patent (divisional, continuation or CIP) is
issued.
302: Recording of Assignment Documents
Recording is voluntary.
Requirements for recordable documents3:
o Cover sheet, containing:
• Name of the partying conveying the interest;
• Name and address of the partying receiving the interest;
• Description of the interest conveyed or transaction being recorded;
• Identification of the interests involved;
• Name and address of the part to whom correspondence concerning the request to record the
document should be mailed;
• Date the document was executed; and
• Signature of the party submitting the document.
o Application number or patent number and filing date;
o Inventor(s); and
3
As a general note, all documents submitted to the USPTO should be on one-sided paper.
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o Recording fee.
A legal assignment does NOT need to be in English. It will be accepted if translated and signed by the translator.
Each patent cover sheet should also contain the number of patent applications or patents identified in the cover sheet
and the total fee.
One assignment document may be used for multiple patents/applications.
A cover sheet used to record a government interest must also:
o Indicate that the document relates to a governmental interest; and
o Indicate, if applicable, that the document to be recorded is not a document affecting title.
Some assignment documents can be sent to the PTO by fax, and these must include:
o An identified application or patent number;
o One cover sheet to record a single transaction; and
o Payment of the recordation fee.
Assignment-related documents that cannot be sent to the PTO by fax include:
o Assignments submitted concurrently with newly filed patent applications;
o Documents with two or more cover sheets;
o Requests for corrections to documents recorded previously;
o Requests for “at cost” recordation services; and
o Resubmission of a non-recorded assignment.
Assignments and other documents affecting title may also be submitted to the PTO electronically through the PTO’s
Electronic Filing System (EFS).
306: Assignment of Division, Continuation, Substitute, and CIP in Relationship to Parent Application
The official assignment records will only reflect an assignment of a division or continuing application if a request for
recordation is in compliance.
New assignment papers must be recorded for non-provisional applications that claim new material not included in the
previously filed provisional application.
307: Issue to Assignee
A request for a patent to issue to an assignee must be filed with the PTO no later than the date on which the issue
fee is paid, and the request must indicate that the assignment has been recorded with the Office.
If the request is made after the date of issuance, the request must include a request for a certificate of correction
under 37 CFR § 1.323 (Certificate of Correction of Applicant’s Mistake). This request must state that the assignment
was submitted for recording before issuance of the patent.
If multiple names are on the assignment document, only the first name will be printed on the patent.
309: Restrictions Upon Employees of US Patent and Trademark Office*
Officers and employees of the PTO may not apply for or acquire a patent (or any interest therein) during the period
of their appointments and for one year thereafter except by inheritance or bequest.
For patents applied for after one year post-employment, they may not be entitled to any priority date earlier than one
year after the termination of their appointment.
315: Indexing Against a Recorded Certificate
To record a document with respect to other patents or applications (such as the filing of an additional patent related to
the first disclosure), the document must:
o Be submitted to the Assignment Division;
o Be an original document or copy;
o Include a cover sheet; and
o Include a fee.
317: Handling of Documents in the Assignment Division
Assignments that are made conditionally (like on an agreement to get married) are regarded as absolute assignments
for Office purposes, as the Office does not determine whether such conditions have been fulfilled (and thus will
record the assignment).
323: Procedures for Correcting Errors in Recorded Assignment Documen
If there is an error in the recorded assignment document, a “corrective document” must be submitted to the PTO.
A copy of the original assignment document with the correction (initialed and dated) will suffice and will require a new
Recordation Form Cover Sheet.
324: Establishing Right of Assignee to Take Action*
Ownership needs to be established when: Ownership does NOT need to be established when:
• An assignee signs a request for prosecuting the • There is an assignee for a continued prosecution
application if ownership has been changed application where ownership has not changed
• An assignee signs a request for the status of the • Signing a small entity statement
application or wants to allow someone to inspect the • Signing a statement of common ownership between two
application inventions
• The application becomes abandoned • Signing a NASA or DOE property rights statement
• A legal representative is appointed • Signing a certificate under 37 CFR § 1.8
• A terminal disclaimer is signed • Filing a request for re-examination of a patent
• A reissue application is filed
• Correction of inventorship occurs
• An application under 37 CFR § 1.47(b) is filed
• An Issue Fee Transmittal form is signed
• A reply to an Office Action is signed
General
An inventor may elect to prosecute an application by him/herself (pro se), or s/he may obtain help from a
registered patent attorney or agent who has not been suspended or excluded by the PTO.
Note that the registered attorney or agent may not appoint an unregistered associate to assist in
prosecution (MPEP 402.02).
A Customer Number is used to designate the correspondence address of a patent application or patent
for the purposes of correspondence, fees, and to associate power of attorney of the application.
o A customer number may be used to grant Power of Attorney (POA) to more than one person (i.e.,
multiple attorneys in a law firm). However, POA can only be granted to individuals and never to a
law firm as an entity.
In the case of joint inventors, one inventor may grant POA to a co-inventor, though it requires a request
for special recognition.
605: Applicant
Applicant’s Signature and Name
o Applicant’s name may be signed in non-English characters.
o A party with proprietary interest in the invention claimed in an application can sign on behalf of
the inventor if s/he is unable or refuses.
Joint Inventors
o The order of patentee’s listed on an issued patent is the order in which they appear on the
oath/declaration.
o In order to qualify as an inventor, one must have actually contributed to at least one of the claims.
• In the case of a provisional where no claims are made, each listed inventors must have
actually contributed to the subject matter.
o 35 UCS § 116 allows inventors to apply for a patent jointly even though:
• They did not physically work together or at the same time;
• Each did not make the same type or amount of contribution; or
• Each did not make a contribution to the subject matter of every claim of the patent.
608: Disclosure
Specification
o The specification is a written description of the invention explaining how to make it and use it.
The specification should distinguish the invention from prior inventions, as well as make clear all
improvements in the art.
o The spec must commence on a separate sheet and the text must be written in a non-script
typefont. British English spellings are acceptable.
o Hyperlinks
• It is acceptable to have non-active hyperlinks only when the hyperlinks are part of the
invention.
• However, it is improper to attempt to incorporate subject matter by reference using
hyperlinks.
o The specification may contain tables and chemical formulas instead of formal drawings.
o The written specification may not contain drawings, flowcharts or graphs.
o The specification is limited to the known applications of the subject matter disclosed and may not
reserve claims to future applications of the subject matter.
o Non-English Specification
• A specification may be filed in a language other than English as long as it is accompanied
by a translation, which:
1. Includes a signed statement that the translation is accurate;
2. Is done only in an emergent situation,
3. Is filed within the specified time limit (37 CFR § 1.52), and
4. Is accompanied by a fee.
Arrangement of Application
o The following order of arrangement of non-provisional application parts is preferable but not
required by the Office:
• Title of invention;
• Cross-references to related applications;
• Statement regarding federally sponsored research or development;
• The names of the parties to a joint research agreement;
• Reference to a sequence listing, a table, or a computer program listing appendix
submitted on a CD and incorporated by reference. The total number of CDs, including
duplicates, must be listed;
• Background of the invention;
Field of the invention
Description of the related art
• Brief summary of the invention;
• Brief description of the several views of the drawings;
• Detailed description of the invention;
• Claim or claims;
• Abstract of the disclosure;
• Sequence listing (if on paper);
o The section headers should appear in upper case letters, without underlining or bolding.
Abstract of the Disclosure
o The abstract should make clear to even a layperson the nature and gist of the disclosure and
should make clear that which is new to art; however, the abstract should not compare the
invention to the prior art.
o Where applicable, the abstract should include the following:
• If the invention is a machine or apparatus, its organization and operation;
• If the invention is an article, its method of making;
• If the invention is a chemical compound, its identity and use;
• It the invention is a mixture, its ingredients;
• If the invention is a process, its steps.
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o The abstract must commence on a separate sheet of paper.
o The abstract should be a single paragraph with 50 – 150 words and no more than 15 lines.
o The language should be clear and concise and not repeat any information provided in the title.
Background of the Invention
o Consists of two parts:
• Field of the invention: Statement of the pertinent field of art.
• Description of the related art: Brief description of the pertinent prior art, including
references where appropriate.
Brief Summary of the Invention
o Should set out the exact nature, operation, and purpose of the invention, and should be
consistent with the subject matter of the claims.
Brief Description of Drawings
o A description of each distinguished part of each drawing must be provided. For example, if the
applicant labels a figure with parts 1A, 1B and 1C, s/he must provide a description for each of
parts 1A, 1B and 1C as opposed to providing a description merely for Figure 1.
Detailed Description of the Invention
o Any person skilled in the art or science should be able to make and use the invention from
reading the description of the invention, without doing extensive experimentation.
o Tables may be included in the description portion of the specification; however, the same tables
must not be included in both the drawings and the description portion of the specification.
Mode of Operation of Invention
o The best mode of operation for the invention known to the inventor at the time of filing must be
disclosed.
Claims
o Numbering of Claims
• The original numbering of claims must be preserved throughout prosecution. If claims are
deleted and/or added during prosecution, they will be renumbered only after allowance.
o Statutory Requirement of Claims
• “35 USC § 112 requires that the applicant shall particularly point out and distinctly claim
the subject matter which he or she regards as his or her invention.” MPEP 608.01(k)
o Form of Claims
• Claims should be placed at the end of the specification.
• If there are more than one claim, they should be separated by a line of indentation.
• They should be arranged by breadth of scope, such that the first claim presented is the
broadest and the last is the most restrictive.
• Claims of like species should be grouped together.
• Process and product claims should be grouped separately.
• Measurements should be provided first in metric units, followed by English units.*
• Claims may contain tables only to the extent necessary to comply with specification
guidelines.
• There should never be two claims covering the same subject matter.
• The preamble of a claim contains a description of things or steps and a body that sets
forth the elements or steps and limitations of the claims.
• Grammatical rules for claims
They should begin with “The invention claimed is…” or “I (or we) claim…”
Each claim should begin with a capital letter and end with a period.
Either a semicolon or a comma separates each paragraph, and the last step
should have an “and” following the semicolon or comma.
If there are numerous claims, they should be numbered consecutively in Arabic
numerals.
o Specific Types of Claims
• Markush Claims: A Markush group is used to define a claim limitation where there is no
generic term to describe a group of things (like side groups of a compound series). A
Markush group is an acceptable form of alternative expression, provided the introductory
phrase “consisting of” and the conjunctive “and” is used, such as the delineation that a
group consists of “groups A, B, C and D.”
• Jepson Claims: A Jepson claim has a preamble that defines what is old, a body defining
what is new and a translational phrase such as “the improvement comprising of”. The
“what is old” part is general taken as admitted prior art.
o Dependent Claims
• Multiple Dependent Claims (MDCs)*
o Photographs
• Black and White:
Where drawings are incapable of accurately depicting the invention, black and
white photos or micrographs may be used in place of final drawings.
Photos must be developed on paper that is DIN size A4 or 8.5 by 11 inches and
they must meet the margin requirements.
• Color:
Color photos will be accepted if the requirements for both black and white photos
and color drawings have been met.
• Example of photograph from US Patent PP8414:
o New Drawing
• All drawings submitted after the original application filing must be marked as
“Replacement Sheet” or “New Sheet.”
o Correction of Drawings
• If a drawing containing new matter is added after the beginning of prosecution, it will not
be entered.
• A “correct drawing” is one that includes corrections of informalities and changes
approved by the examiner.
• An “informal drawing” is one that does not comply with the drawing requirements, and the
examiner may require corrections to make it acceptable.
o Cancelation of Figures
• If a drawing figure is cancelled during prosecution, a replacement sheet must be
submitted. Where the canceled figure is the only figure in the drawing, applicant should
submit a marked-up copy of the drawing with annotation stating the cancelation.
Tables
o If a lengthy table is submitted on a CD or in e-form, the table will NOT be published as part of the
patent document. Rather, it will be published on the sequence homepage of the USPTO web site
and the patent document will include a standardized “lengthy table” statement, directing the
reviewer to the location of the table.
o Tables will be assumed to be presented in portrait view unless they are indicated as landscape.
Models, Exhibits, Specimens
o These are generally not accepted by the Office unless they are requested by the Office.
o For biotech applications, specimens are often required to be submitted so that they are available
for examination/use by the public.
New Matter
o Matter not in original specification, claims or drawings
• Any matter added to claims or drawings that was not adequately disclosed in the original
specification will be considered new matter, and such claims or drawings will be rejected.
• New matter cannot be added through amendment.
• Remember that the only way to add new matter after the filing date is through a
Continuation-in-Part (CIP) application.
• Where an examiner requires cancelation of new matter that is entered as an amendment
to the specification, an applicant may petition for review of such decision (not appeal).*
• Where an examiner rejects new matter as affecting claims, the applicant may appeal (not
petition).*
o New matter by preliminary amendment
• A preliminary amendment that is present on the date of filing is considered part of the
original disclosure.
It is the applicant’s responsibility to ensure that a supplemental oath or
declaration is filed supporting preliminary amendment submitted on the date of
701: Statutory
The main conditions precedent to the grant of a patent to an applicant are set forth in 35 USC § 101, 102
and 103.
Request, 37 CFR
Requirement Max. Length of Suspension
Section
1.103(a) Petition with a showing of good and sufficient cause; a fee 6 months
1.103(b) Request at the time of filing a CPA; a fee 3 months
1.103(c) Request at the time of filing an RCE, a fee 3 months
1.103(d) Request for deferral of examination 3 years from earliest filing date for which
a benefit is claimed under Title 35
713: Interviews
An interview is defined as any personal appearance of an applicant, attorney, or agent before the
examiner or a telephone conversation or video conference or email between such parties presenting
matters for the examiner’s consideration.
Interviews Prior to First Official Action
o Request for interviews are generally granted prior to the first Office action in continuing or
substitute applications.
o In all other applications, requests are granted when the examiner determines that such an
interview would advance prosecution.
Recordation
o The substance of any interview must be made part of the application.
o It is the responsibility of the applicant or his attorney to make sure the substance of an interview
is made of record, except where the interview was initiated by the examiner. The examiner should
always verify accuracy.
Prohibited Interviews or Granted, Special Situations
o Except in unusual situations, no interview is permitted after the brief on appeal is filed or after an
application has been passed to issue.
o Interviews normally should not be granted unless the requesting party has authority to bind the
principal concerned.
Finally Rejected Applications
o One interview is generally permitted after final rejection.
o A second or further interview may be held if the examiner believes it will expedite prosecution.
718: Affidavit or Declaration to Disqualify Commonly Owned Patent or Published Application as Prior Art,
37 CFR § 1.130
See: 37 CFR § 1.130. Affidavit or declaration to disqualify commonly owned patent or published
application as prior art.
37 CFR § 1.130(a) may be used when:
o The rejection in an application or patent under reexamination is a rejection under 35 USC § 103
in view or a US patent application or publication which is not prior art under 35 USC § 102(b).
o The inventions defined by the claims in the application or patent under reexamination and by the
claims in the US patent are not identical, but are not patentably distinct, and are owned by the
same party.
37 CFR § 1.130(b) states that: A double patenting rejection will be made when the claims in the
reexamination and the prior art in question are not patentably distinct from one another and the same
invention is claimed, but this may be resolved by adding a terminal disclaimer.
The phrase “prior art inventor under 35 USC § 104” requires that the inventor named in the application or
patent be the prior inventor within the meaning of 35 USC § 104 in that an applicant or patent owner may
not:
o Establish a date of invention in a foreign country other than a NAFTA or WTO member country;
o Establish a date of invention in a WTO member country other than a NAFTA country earlier than
January 1, 1996; or
o Establish a date of invention in a NAFTA country other than the US earlier than December 8,
1993.
[Specific types of petitions reviewed by the Office Director, as well as specific technology center Directors are
listed in MPEP 1002 and 1003.]
1201: Introduction
Where patent claims are denied because of prior art or other patentability issues, the questions raised
relate to the merits. Remember that questions raised as to procedure are petitionable (to the Director),
but those raise on the merits are appealable (to the BPAI).
1206: Amendments and Affidavits or Other Evidence Filed With or After Appeal
Amendments are not submitted as a matter of right.
Amendments filed after the filing of a Notice of Appeal, but prior to the date of filing an Appeal Brief,
may only be admitted to:
o Cancel claims;
o Comply with any requirement of form expressly set forth in a previous action;
o Present rejected claims in better form for consideration on appeal; or
o Amend the specification or claims upon a showing of good and sufficient reasons as to why the
amendment is necessary and was not earlier presented.
Amendments filed on or after the filing of an Appeal Brief may only be admitted to:
o Cancel claims (where such cancelation does not affect the scope of any other pending claim in
the proceeding); or
o Rewrite dependent claims into independent form.
Affidavits or other evidence submitted after filing of a Notice of Appeal, but prior to an appeal brief, may
be admitted if the examiner determines that:
o The affidavit or other evidence overcomes all rejections under appeal; and
o A showing of good and sufficient reasons why the affidavit or other evidence is necessary and
was not earlier presented has been made.
1305: Jurisdiction
Jurisdiction over the patent passes from the examiner to the Director after the Notice of Allowance is sent.
1400: General
A patent may be corrected/amended in one of four ways:
o Reissue
o Issuance of a Certificate of Correction, which becomes part of the patent
o Disclaimer
o Reexamination (discussed in MPEP 2200 and 2600)
1401: Reissue
The provisions of 35 USC § 251 permit the reissue of a patent in order to correct an error in the patent
deeming it wholly or partly inoperative or invalid, which was made without any deceptive intention and
provide the criteria for the reissue patent.
1413: Drawings
If there are no changes to the drawing of an original patent, the same drawings may be used for the
reissue application. However, a request must be submitted in order to have the drawings transferred.
Where a change to the drawings is desired, applicant must submit a replacement sheet for each sheet of
drawing containing a figure to be revised.
1430: Reissue Files Open to the Public and Notice of Filing Reissue Announced in Official Gazette
Reissue applications are open to public inspection.
The filing of a reissue application – excluding CPAs – is announced in the Official Gazette.
1441: Two-Month Delay Period
Reissue applications will be acted on in advance of other applications (will be “made special”).
Generally, a reissue will not be acted on sooner than two months after the announcement is made in the
Official Gazette.
o This delay period allows members of the public to review the reissue application and prepare/file
a protest if desired.
An applicant may file a petition under 37 CFR § 1.182 to avoid this delay.
Protesting a Reissue Application
o A protest may be filed during the pendency of a reissue application, prior to the date of the
mailing of the Notice of Allowance.
o Where a final rejection has been issued or the prosecution on the merits has been otherwise
closed, a petition under 37 CFR § 1.182 along with the required fee for entry of the protest are
required.
o If the protest is a “reissue litigation” protection, it is important that the protest be filed early if the
protestor wishes the protest to be considered at the time the Office first acts on the reissue
application.
1451: Divisional Reissue Applications; Continuation Reissue Applications; Where the Parent is Pending
The original patent may be divided into several divisional reissues.
There is no requirement that a family of divisional reissue applications issue at the same time; however, it
is required that they contain a cross reference to each other in the specification.
The same patent claim cannot be presented for examination in more than one of the divisional reissue
applications, as a pending claim, in either its original or amended versions.
1490: Disclaimers
A disclaimer is a statement filed by an owner (in part or in entirety) of a patent or application, in which
said owner relinquishes certain legal rights to the patent.
There are two types of disclaimers:
o Statutory disclaimer: The applicant must disclaim or dedicate to the public the entire term of a
certain part of the patent.
• In a pending application, entire claims cannot be disclaimed, but rather must be
cancelled.
• Since a statutory disclaimer is made in order to relinquish rights, it cannot be made as a
vehicle for adding or amending claims.
o Terminal disclaimer: The applicant must disclaim or dedicate to the public the terminal portion of
the entire patent.
• The term to be disclaimed must be stated.
The owner of the patent or application can sign a disclaimer, and a person empowered by the owner to
sign the disclaimer can also sign it.
For a disclaimer to be accepted, it must be signed by the proper party as follows:
o A disclaimer filed in an application must be signed by:
• The applicant where the application has not been assigned;
• The applicant and the assignee where each owns a part interest in the application;
• The assignee where assignee owns the entire interest in the application; or
• An attorney or agent of record.
o A disclaimer filed in a patent or a reexamination proceeding must be signed by either:
• The patentee, or
• An attorney of agent of record.
Withdrawing a Terminal Disclaimer
o Before issuance of a patent, applicant may file a petition under 37 CFR § 1.182 to request
withdrawal.
o Post-issuance, there is no available mechanism for withdrawal.
1504: Examination
Ornamentality, novelty, nonobviousness, enablement and definiteness are necessary prerequisites to the
grant of a design patent.
Three kinds of patentable design include:
o Designs for an ornament, impression, print or picture applied to an article of manufacture (surface
indicia),
o Designs for the shape or configuration of an article of manufacture, and
o A combination of these two.
The following are not patentable:
o A picture standing alone.
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o A design containing offensive subject matter.
A design patent claiming an article that will be hidden from view during its use will likely not be patentable
due to lacking ornamentality.
A design must be original and not merely a simulation of an existing object or person. Such a claim will be
rejected under 35 USC § 171 as nonstatutory subject matter in that the claimed design lacks originality.
The Graham factual inquiries applicable to evaluating obviousness for utility patent applications also
apply to design applications. As a reminder, these are:
o Determining the scope and content of the prior art;
o Ascertaining the differences between the claimed invention and the prior art;
o Resolving the level of ordinary skill in the art; and
o Evaluating any objective evidence of nonobviousness (“secondary considerations”).
Rejections under 35 USC § 171 may be based on:
o A design visible in its ultimate end use which is primarily functional based on the evidence of
record; or
o A design not visible in its ultimate hidden end use which is itself evidence that the design is
primarily functional.
To overcome a rejection based on 35 USC § 171:
o Submit a declaration under 37 CFR § 1.132 over applicant’s signature clearly explaining,
specifically and in depth, which areas of the claimed design were created for primarily ornamental
reasons.
o Show that the design was done with “thought of ornament.”
o Submit a declaration from a representative of the company that commissioned the design (would
show intent behind creation of the design).
Restriction
o General restriction practice applies to design patent applications.
o A restriction will be required in a design application that contains more than one patentably
distinct design.
o Design patents are independent if there is apparent relationship between two or more separate
articles disclosed in the drawings.
o To overcome a design restriction, the embodiments have to meet the following requirements:
• They must have overall appearances with basically the same design characteristics; and
• The differences between the embodiments must be sufficient to patentably distinguish
one design from the other.
Double Patenting
o Determining whether there is a double patenting issue in a design application involves making the
following inquiries:
• Is the same design being claimed twice?
If yes, then a rejection should be given under 35 USC § 171 on the grounds of
“same invention.”
If not, are the designs directed to patentably distinct variations of the same
inventive concept?
o If yes, then a rejection based on non-statutory type double patenting
should be given.
o For a “same invention” type double patenting rejection (statutory) based on two designs, identical
designs with identical scope must be twice claimed.
o For an “obviousness” type double patenting rejection (non-statutory) for design patent
applications, the examiner will apply the Graham factual inquiries in comparing the overall
appearance of the claimed design in the application with the overall appearance of the claimed
design in the conflicting application or patent.
• A terminal disclaimer may be used to overcome this type of rejection.
Foreign Priority
o The provisions of 35 USC § 119(a) – (d) apply to design patent applications. However, in order to
obtain the benefit of an earlier foreign filing date, the US application must be filed within 6
months of the earliest date on which any foreign application for the same design was filed, as
opposed to 12 months for utility applications.
o In the absence of a statement in the design application as originally filed incorporating by
reference the disclosure of an earlier filed application, the disclosure in a continuing application
may not be amended to conform to that of the earlier filed application for which priority is claimed.
Material must be explicitly incorporated.
1510: Reexamination
General reexamination rules apply to design applications. See MPEP 2200.
1511: Protest
General protest rules apply to design applications. See MPEP 1900.
1606: Drawings
If color drawings or photos are submitted, two copies are required.
If the required copies are not submitted at the time of filing, a filing date will still be accorded the
application. However, the drawings must be submitted before the application is forwarded to the
examiner.
The requirements for photos for utility patent applications are waived for plant applications.
1607: Specimens
Specimens need not be submitted unless the examiner requests them.
Other
The language of the claim must refer to a “new and distinct variety of plant.”
Absolutely no claim should be directed toward a new variety of flower or fruit.
The specification should not include statements with laudatory expressions (such as “prettier roses”).
A PCT application provides a mechanism for an applicant to file a single “international application” in a
single language.
An application filed via this method goes through two stages:
o The international stage, where the application is filed as a PCT application; and
o The national stage, where the application enters local prosecution of a PTO-member designated
country.
The PCT offers an alternative route to filing foreign applications in the offices of the foreign countries that
are PCT members, and PCT filing does not preclude taking advantage of the priority rights and other
advantages provided under the Paris Convention and WTO agreement on Trade-Related Aspects of
Intellectual Property (TRIPS Agreement).
The applicant must designate at least one member state upon filing the PCT application, and all
designations must be made at the time of filing (cannot be added later).
o However, an applicant may make preliminary designations at the time of filing and then will have
15 months to convert preliminary designations to regular.
In most instances, a national US application is filed first, and a PCT application is then filed on the same
invention within a year, claiming the benefit of the US national application filing date.
In a continuation or CIP application, a specific reference to the parent application must be included in an
application data sheet or in the first sentence of the specification.
Important Players in the PCT Process
o Receiving Office (RO)
• This is the office where an applicant files an international application.
• US residents and nationals choose from either the USPTO or the WIPO.
• An international application must contain the designation of at least one Contracting State
in which patent protection is desired.
• The RO will grant an international filing date, collect fees, handle informalities by direct
communication with the applicant, and monitor all corrections.
• By 13 months from the priority date, the RO should prepare and transmit a copy of the
international application, called the Search Copy, to the ISA; and the RO then forwards
the original, called the Record Copy, to the IB. (See ISA and IB details below).
o International Searching Authority (ISA)
• This Office conducts a prior art search of the inventions claimed in international
applications and issues an International Search Report (ISR).
• For international applications filed after January 1, 2004, the ISA also issues a Written
Opinion.
• Generally, US applicants choose the US to act as the ISA; alternatively, they often
choose the European Patent Office (EPO).
• The international search report and the written opinion will normally both be issued by the
USA within 3 months from the receipt of the search copy (this usually occurs 16 months
after the priority date).
The search report merely contains a listing of the prior art references.
The written opinion discusses whether the ISA believes each claim satisfies the
conditions of novelty, non-obviousness and industrial applicability.
• Once complete, the ISA transmits a copy of the search report and written opinion to the
IB.
o International Bureau (IB)
• The WIPO in Geneva performs the duties of the IB.
• The IB maintains the master file of all the international applications and acts as the
publisher and central coordinating body under the PCT.
• After the search report has been transmitted to the IB, applicant has two months to
amend claims directly with the IB.
1893: National Stage (US National Application Filed Under 35 USC § 371)
An applicant who uses the PCT instead of filing a national application in the USPTO gains the benefit of:
o A delay in time when papers must be submitted to the national offices;
o An international search and a written opinion;
o A delay in the expenditure of fees;
o Additional time for research;
o The option of obtaining international preliminary examination.
The national stage is unique compared to a domestic application in that:
o It is submitted later (normally 30 months from the claimed priority date, compared to 12 months
for a domestic application claiming priority);
o The status of the prior art is generally known before the national stage begins, and this is not
necessarily so in a domestic national application;
o If the filing of an international application is to be taken into account in determining the
patentability or validity of any application for patent or granted patent, then special provisions
apply.
One the national stage application has been taken up by the examiner, prosecution proceeds in the same
manner as a domestic application except that the prior art date is the international priority date and the
unity of invention requirement proceeds under rules of restriction requirement.
Correcting Deficiencies
1896: The Differences Between a National Application Filed Under 35 USC 111(a) and a National Stage
Application Submitted Under 35 USC § 371
Filing Date
o Domestic National: For an application filed under 35 USC § 111(a), the filing date is the date the
USPTO receives a specification containing a description, at least one claim and any required
drawings.
o National Stage: For a PCT international application, the filing date is the date the applicant
satisfies Article 11 requirements and contains a description, a claim, names at least one applicant
who is a resident or national of a PCT Contracting State, filed in the prescribed language and
designating at least one Contracting State.
Effective Date as a Reference
o Domestic National: Under § 102(e), a national application’s date of reference is its earliest
effective US filing date, taking into consideration any proper priority or benefit claim to prior US
applications under 35 USC § 119(e) or 120 if the prior application(s) properly support(s) the
subject matter to make the rejection.
o National Stage: Under § 102(e), an international application’s date of reference may be the
international filing date if certain conditions are met, such as 1) the international filing date is after
Nov 29, 2000, 2) it designates the US and 3) is published under PCT Article 21(2) in English.
Priority Requirements
2012: Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of
Disclosure
Collateral Estoppel
o Once a patent is declared invalid, a collateral estoppel barrier is created against any further
litigation and the PTO will not review any other matters concerning it.
2121: Prior Art; General Level of Operability Required to Make a Prima Facie Case
Prior Art is Presumed to be Operable/Enabling
o When prior art anticipates or makes obvious all elements of the claimed invention, the burden is
on the applicant to provide facts showing inoperability of the prior art.
o The level of disclosure required within a reference to make it an “enabling disclosure” is the same
regardless of the type of prior art.
o Efficacy is NOT a requirement for prior art enablement as long as the reference provides an
enabling disclosure and anticipates a claimed invention in sufficient detail to enable a person of
ordinary skill in the art to carry out the claimed invention.
Use of Prior Art in Rejections Where Operability Is in Question
o § 102 Rejections and Addition of Evidence Showing Reference is Operable
• It is critical that the reference teach every element of a claim, but it is not necessary that
the reference teach how to practice the invention. A rejection can still be made based on
that reference if there is secondary evidence (other publication, patent, etc.) that teaches
how to make or use the invention.
o § 103 Rejections and Use of Inoperative Prior Art
• A non-enabling reference may qualify as prior art for the purpose of obviousness.
Compounds and Compositions – What Constitutes Enabling Prior Art
o One of ordinary skill in the art must be able to make or synthesize the compound or composition
based on the disclosure.
o A reference does not contain an “enabling disclosure” if attempts at making the compound or
composition were unsuccessful before the date of invention.
Plant Genetics – What Constitutes Enabling Prior Art
o The disclosure must be sufficient to enable one of ordinary skill to grow and cultivate the plant.
Apparatus and Articles – What Constitutes Enabling Prior Art
o A picture may constitute an enabling disclosure as long as the picture shows all of the claimed
structural features and how they are put together.
2123: Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments
Everything disclosed in a patent is available as prior art, even that which is not claimed by the inventor to
be his own.
Nonpreferred and alternative embodiments constitute prior art; the mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives.
2124: Exception to the Rule that the Critical Reference Date Must Precede the Filing Date
In some circumstances a factual reference need not antedate the filing date, such as where a reference is
cited to show a universal fact.
o Such facts include the characteristics and properties of a material or a scientific truism.
2126: Availability of a Document as a “Patent” for Purposes of Rejection Under 35 USC § 102(a), (b) and
(d)
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A secret patent is only available as a reference for § 102(a) or (b) as of the date that it is made available
to the public. However, a secret patent is available as reference under § 102(d) as of the grant date since
102(d) applies where the applicant (or his/her representative or assign) applied for a patent for the same
invention.
The date that a foreign patent is effective as a reference is usually the date patent rights are formally
awarded to its applicant.
2224: Correspondence
All requests for ex parte reexaminations mailed to the PTO should be marked “Mail Stop Ex Parte
Reexamination” to distinguish them from inter partes reexamination requests.
A request for reexamination may not be sent by fax.
Communications from the PTO to the patent owner will be directed to the first named, most recent
attorney or agent of record in the patent file, or to the patent owner’s address if no attorney or agent is of
record.
2266: Responses
Where a patent owner’s submission contains a serious deficiency, such as an omission, and the period
for response has expired, the patent owner will be notified of the deficiency and be given a time period for
the omitted response, which must be provided by the new deadline to avoid termination of the
proceedings.
A response by the patent owner will be considered not fully responsive to a non-final Office action where:
o A bona fide attempt to respond to an examiner’s non-final action is filed;
o before the expiration of the permissible response period;
o but through an apparent oversight or inadvertence, some point necessary to a full response has
been omitted.
In a reexamination proceeding, the patent owner cannot file an RCE under 37 CFR § 1.114.
If a response to the final rejection is filed, the time period set in the final rejection is automatically
extended by 1 month if the response is the first response after the final rejection.
o The period for response should be appropriately extended in the examiner’s advisory action if
there is insufficient time for the patent owner to consider the examiner’s ruling and act on it.
2575: Notices
The Office has no duty to notify the patentee when their maintenance fees are due. Therefore, the
pantentee is entirely responsible for ensuring his fees are submitted on time.
If the maintenance fee is not paid within the grace period, the Office will mail a Notice of Patent Expiration
to the fee address on file.
2580: Review of Decision Refusing to Accept and Record Payment of a Maintenance Fee Filed Prior to
Expiration of Patent
37 CFR § 1.377 provides a mechanism for review of a decision refusing to accept and record payment of
a maintenance fee filed prior to the expiration of a patent.
o A petition may be filed with the Director requesting that the fee be accepted.
o A petition under this section must be filed within two months of the offending action.
A petition under this section is generally used when there was an error in the identifying information
submitted with the maintenance fee.
A petition under this section would not be appropriate where the payer altogether failed to include
required information with the payment.
2590: Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent*
The Director may accept the payment of any maintenance fee due on a patent after the expiration of the
patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the
Commissioner to have been:
o Unavoidable or unintentional; and
o If the surcharge required is paid as a condition of accepting payment of the maintenance fee.
Requirements to petition unavoidable delay:
o Petitions to accept an unavoidably delayed payment of maintenance fees must include:
• The required maintenance fee;
• The required surcharge; and
• A showing that the delay was unavoidable by listing the:
Steps taken to ensure the timely payment of the maintenance fee;
Date and the manner in which the patentee became aware of the expiration of
the patent; and
Steps taken to file the petition promptly.
• The patentee’s lack of knowledge of the need to pay the maintenance fee and/or the
failure to receive the maintenance fee reminder will never count as unavoidable delay.
o Requirements to petition unintentional delay:
• Petitions to accept an unintentionally delayed payment of a maintenance fee must:
Be filed within 24 months after the 6 month grace period;
Including the maintenance fee;
Include the surcharge; and
Include a statement that the delay in payment was unintentional.
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There will be a lapse of time between a patent’s expiration (due to nonpayment of the maintenance fee)
and when the petition to reinstate the patent is accepted. Patent rights are lost during this time.
2601: Introduction
The optional inter partes alternative to reexamination provides third parties with a greater opportunity to
participate in reexamination proceedings while still maintaining the benefits of a reexamination over
litigating in court.
The inter partes option (as opposed to ex partes) also provides the third party with appeal rights, as well
as allowance to participate in the patent owner’s appeal to the Board.
For any inter partes reexamination (IPR) proceeding commenced on or after November 2, 2002, the third
party requester also has the appeal rights to appeal to the Court of Appeals for the Federal Circuit and to
participate in the patent owner’s appeal to the Federal Circuit.
By electing the optional inter parties reexamination process, the requestor must accept a statutory
estoppel against subsequent review, either by the Office or by a Federal Court, of the issues that were or
could have been raised in the reexamination proceeding. This limitation is intended to prevent third
parties from using this form of reexamination to harass patent owners.
2624: Correspondence
A request for IPR may not be sent by fax.
Any letters sent to the Office relating to the reexamination proceeding should identify:
o The proceeding by number of the patent undergoing reexamination;
o The reexamination request control number assigned and name of the examiner; and
o The examiner’s Art Unit.
2656: Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination
In addition to patents and printed publications cited by the requester in an IPR, the examiner must also
consider patents and publications:
o Cited by another reexamination requester;
o Cited by the patent owner under a duty of disclosure;
o Discovered by the examiner in searching;
o Of record in the patent file from earlier examination; and
o Of record in the patent file from any 37 CFR § 1.501 (Citation of Prior Art in Patent Files)
submission prior to date of an order if it complies with 37 CFR § 1.98 (Content of Information
Disclosure Statement).
2687: Notice of Intent to Issue IPR Certificate and Conclusion of Reexamination Proceedings
Upon conclusion of the IPR proceeding, the examiner must complete a Notice of Intent to Issue IPR
Certificate (NIRC).
An NIRC is proper:
o When there is not timely response by the patent owner to an Office action requiring a response.
Generally this is when all claims are under rejection and all claims will be canceled.
o After a RAN where no party to the reexamination files a notice of appeal.
o After the filing of a notice of appeal, where all parties who filed a notice of appeal fail to timely file
an appellant brief.
o After a final decision by the Board, where there is no further timely appeal to the Board, where
there is no further timely appeal to the Court of Appeals or for a rehearing by the board.
o After the Federal Court appeal process has been completed and the case is returned to the
examiner.
2710: Term Extensions or Adjustments for Delays Within the USPTO Under 35 USC § 154
Utility and plant patents issuing on applications filed on or after June 8, 1995, but before May 29, 2000,
are eligible for the patent term extensions.
Utility and plant patents issuing on applications filed on or after May 29, 2000 are eligible for the patent
term adjustments.
Plant and utility patents issuing on applications filed before June 8, 1995 which have a term that is the
greater of the “twenty-year term” or seventeen years from patent grant are not eligible for term extension
or adjustment due to delays in processing the patent application by the United States Patent and
Trademark Office.
There are no patent term adjustment provisions for design patents.
2720: Applications Filed Between June 8, 1995 and May 28, 2000
The 20-year term for patents issued between June 8, 1995 and May 28, 2000 may be extended for a
maximum of 5 years for delays in the issuance of the patent.
Delays must be due to:
o Interferences
o Secrecy orders
o Appeals
If the patent issues with a different patent term extension value than that indicated on the Notice of
Allowance or Office computer records, the patentee may seek correction of the information by filing a
request for a Certificate of Correction.
If the applicant disagrees with the PTO’s determination of whether to extend the patent, he may request
review by petitioning under 37 CFR § 1.181.
2730: Applications Filed On or After May 29, 2000; Grounds for Adjustment
37 CFR § 1.702 governs the bases for patent term adjustments:
o 1.702(a): A patent is entitled to Patent Term Adjustments (PTA) if the Office fails to perform
certain acts of examination within specified time periods.
o 1.702(b):
• A patent is entitled to PTA if the Office fails to issue a patent within 3 years of the actual
filing date of the application.
• For international applications, the actual filing date is the date that national stage
commences.
o 1.702(c): A patent is entitled to PTA if the patent is delayed by an interference.
o 1.702(d): A patent is entitled to PTA if the patent is delayed by a secrecy order.
o 1.702(e): A patent is entitled to PTA if the patent is delayed by an appeal.
No submission or petition on behalf of a third party concerning a PTA under 35 USC § 1.54(b) (Parts of
Application to be Filed Together; Filing Receipt) will be considered by the Office.