Correction of Patents Overview Vehicles for correcting patents Certificate of Correction (C of C): for clerical errors, typos, etc. PTO’s mistake Applicant’s mistake Reissue application Broadening claim scope: within 2 years from issue Narrowing claim scope: during the term of the patent Reexamination of patent Ex parte reexamination: between applicant and PTO Inter partes reexamination: […]
Petition and Appeal What triggers petition or appeal? What triggers a petition: an objection or a formal/procedural requirement, such as: A new matter objection to specification A restriction requirement What triggers an appeal: a rejection of claims on any ground Petition to overcome objections: MPEP1000 General aspects of a petition Petition to the Director or […]
Amendments and Replies to Office Actions Methods of transmitting submissions (not applications) to PTO USPS express mail to addressee: f/d = date-in; use express mail drop box at own risk MPEP513 Regular US mail with a certificate of mailing: must be inside US (certificate of mailing is not acceptable from a foreign country!) and include […]
Nonprovisional Application – Parts, Form and Content Filing date requirements Required parts to obtain filing date: Specification At least one claim Drawing if necessary to understand the invention Required parts to maintain a filing date: Oath or declaration Filing fee Method of transmitting patent application USPS express mail to addressee: f/d = received by USPS […]
Nonobviousness; §103 Most common §103 rejection: §103(a) Prior art under §103 All §102 events MPEP2141.01 Admissions made by the applicant MPEP2129 Labeling drawing as prior art even though the subject is not prior art Written admission during prosecution even when later recanted Jepson-type claim’s preamble: implied prior art, but may be overcome Factual inquiries to […]
Novelty and Loss of Right; §102 §102(a): prior art must be by another; default date of current invention (DOI) is the effective f/d; may be overcome by Rule 1.131 or Rule 1.132 declaration depending on the situation. General elements: conception, reduction to practice(RTP), reasonable due diligence Actual RTP: testing is not required Constructive RTP: filing […]
Parts of a Utility Patent; §112 Drawings Drawings necessary to understand invention: f/d is when drawing is submitted to PTO Drawings helpful to understand invention: may be added later w/o affecting f/d Later submitted drawings: no new matter Drawings must show all of the claimed elements Specification: §112¶1 [key idea: full disclosure of invention]: Written […]
DEPORTABILITY (Any alien in and admitted to the U.S. is removable—if present but not admitted, then inadmissible, not deportable) 1. Does a deportability ground apply?—237 Has he committed a crime—p.37-38; 237(a)(2) Involving moral turpitude? An aggravated felony? Drug offense? (p.38) Of domestic violence? Was he inadmissible at the time of entry or of adjustment of […]
Deferential review v. No constitutional protection Difference between granting deferential review and finding no constitutional protection There is a difference between the Court granting deferential review and the Court finding no constitutional protection. In granting review, no matter how deferential, the Court at least recognizes that constitutional rights have been implicated and thus that its […]
Asylum analysis Matter of Chang (I & N 1989) If a law or policy isn’t inherently persecutive, one can’t demonstrate that it is persecutive simply with evidence that it is applied to all persons, including those who don’t agree with it—fact that a citizen of another country may not enjoy same const’l protections as a […]
