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PATENT BAR REVIEW OUTLINE : Nonprovisional Application – Parts, Form and Content

Nonprovisional Application – Parts, Form and Content

  1. Filing date requirements
    1. Required parts to obtain filing date:
      1. Specification
      2. At least one claim
      3. Drawing if necessary to understand the invention
    2. Required parts to maintain a filing date:
      1. Oath or declaration
      2. Filing fee
  2. Method of transmitting patent application
    1. USPS express mail to addressee: f/d = received by USPS (date stamp) MPEP513
      1. Should retain mailing label number to facilitate proof if lost
      2. Petition to correct USPS express mail error: copy of mailing label, copy of express-mailed paper showing mailing label number, PTO-returned postcard, declaration/affidavit if label is faulty
      3. Use drop box at own risk
      4. Express mail to post office does not count!
    2. Regular US mail: f/d = actually received by PTO
    3. Hand delivery: f/d = actually received by PTO
    4. Electronic filing
    5. No fax!
  3. Specification: format, requirement
    1. Parts
      1. Title
      2. Cross reference to related applications (such as continuation, divisional, CIP, etc.)
      3. Statement re federally sponsored research
      4. Parties to joint research agreement (avoid obviousness rejection)
      5. Reference to sequence listing
      6. Background of invention
      7. Brief summary of invention
      8. viii.Brief description of views of the drawing
      9. Detailed description of the invention
      10. Claim(s)
      11. Abstract of the disclosure
      12. Sequence listing, if on paper
    2. Specification requirements
      1. Specification must support all claims; §112¶1
      2. Must not contain drawings or flow diagrams (should be in the drawings), but chemical and mathematical formulas are allowed
      3. Actual work in past tense, non-actual work (simulated, predicted) in present tense
      4. Non-English application is permitted, but with a translation and fee
      5. Trademarks allowed; hyperlinks not allowed
    3. Incorporation by reference MPEP608.01(p)
      1. Incorporate by reference only essential material including only:
        1. Issued US patent
        2. Pending US application commonly owned with the current application
      2. Priority claim ≠ incorporation by reference, but may claim priority and incorporate by reference in one sentence (this application claims priority to and hereby incorporate by reference …)
      3. Improper incorporation by reference: may later file amendment with a statement that the added material includes no new matter.
      4. Continuing application often frequently incorporate by reference the parent application or patent.
    4. Deposit of biological material
      1. Must be finished no later than 3 months after the notice of allowance
      2. No new matter
    5. Nucleotide and amino acid sequence: no new matter
  4. Claim: numbering, arrangement, multiple dependent claim (MDC)
    1. Claim numbering
      1. Preserved throughout the prosecution, even when old claims are cancelled
      2. Renumbered after prosecution closes and before publication
    2. Claim arrangement
      1. Dependent claim follows immediately the claim it depends on
      2. No line crossing, but claim addition or deletion during prosecution may disrupt this
    3. Multiple dependent claim wording MPEP608.01(n)
      1. Only refers to preceding claim(s)
      2. Only in the alternative
      3. Must not depend on another multiple dependent claim, even indirectly!
    4. Multiple dependent claim fee calculation MPEP608.01(n)
      1. MDC fee = number of claims that the MDC directly depends on
      2. Claim that depends on an MDC: fee = same as that mdp
      3. Improper MDC and subsequent claims it spawns: treated as single dependent claims only
  5. Drawings
    1. Drawings necessary for understanding the invention: required to obtain f/d
    2. Drawings only helpful for understanding the invention: not required to obtain f/d, may be submitted later
  6. Oath or declaration
    1. Must identify application and inventor(s)
    2. Must state that invention is original and first
    3. Must acknowledge duty to disclose
    4. If foreign priority is claimed, then must identify the priority foreign application(s) and all earlier-filed related foreign application, unless these applications are identified in application data sheet (ADS)
    5. CIP: acknowledge duty to disclose
  7. Abstract of the disclosure MPEP608.01(b): purpose is to facilitate searching
    1. Required to complete the application, but not for f/d
    2. Word limit: 150
  8. Small entity status
    1. Small entity includes
      1. Independent inventor or other individual (e.g., assignee)
      2. Small business with 500 or fewer employees, including all affiliates
      3. Non-profit organization that has not sold the rights to a non-small entity
    2. Some (but not all) fees are reduced to 50%
    3. Status may be asserted with a written statement of entitlement, signed by inventor/assignee/agent
    4. New determination of status will be done upon patent issue and for maintenance fees.

Nonprovisional Application Examination (Substantive)

  1. Order of examination
    1. Normal order
      1. Based on the order of US f/d, not foreign priority date
      2. May be made special to be examined earlier
        1. Director’s order to expedite
        2. Government request for immediate action
        3. Applicant’s petition to make special (see below)
    2. Petition to make special (no fee) MPEP708.02
      1. Health of the applicant: to facilitate applicant’s assistance to PTO; medical certificate required
      2. Age of the applicant: 65 or older; birth certificate required
      3. Environmental quality: materially enhances the quality of the environment; explanation required
      4. Energy: materially contributes to energy utilization and conservation; explanation required
      5. Superconductivity: involves superconductivity; explanation required
      6. Counter-terrorism: explanation required
    3. Petition to make special (fee required) MPEP708.02
      1. For the asking: application not yet examined; search already made; discussion on patentability
      2. Biotechnology application of small entity: application is a major asset
      3. Recombinant DNA research: explanation required
      4. HIV/AIDS and cancer: explanation required
      5. Prospective manufacturing: must show proof; search already made
      6. Actual infringement: infringement already in action; search already made
    4. Suspension and deferral of action MPEP709
      1. Suspension of examination by PTO: avoided if possible
        1. Maximum 6 months
        2. Possible reason: a reference will soon be available
      2. Suspension at applicant’s request
        1. For good cause: must not have outstanding OA
          1. Petition + fee
          2. 6 months maximum
        2. In application with RCE (utility patents) or CPA (design patents)
          1. Request must be filed with RCE or CPA
          2. Fee required
          3. 3 months maximum
          4. Possible reason: waiting for expert testimony or experimental results
        3. Deferral of examination for published application
          1. 3 years maximum, from the earliest effective f/d
  2. Statutory subject matter; §101
    1. Four categories: process, machine, manufacture and composition of matter, including improvements MPEP706.03
      1. Not statutory subject matter: scientific principle divorced from tangible structure
      2. Not statutory subject matter: naturally occurring products, expect purified or genetically engineered
      3. Not statutory subject matter: printed matter that does not cooperate with some structure
    2. Must have utility: lawful use that provides public benefit MPEP2107.01
      1. Not patentable: incredible inventions (e.g., perpetual motion machine)
      2. Not patentable: solely useful in utilizing nuclear energy or material in an atomic weapon MPEP706.03(b)
  3. Third party protest: basic idea = to minimize harassment to the applicant MPEP1900
    1. Must identify application
    2. Filed before publication of application or mailing of notice of allowance (If application is published, then protest is not allowed)
    3. Served upon applicant, or filed in duplicate in PTO if service is not possible
    4. Protester has no further right of participation
    5. Applicant need not respond unless requested to do so by PTO
    6. Protest based on patents, publications or other information: considered by PTO while application is still pending; protest must include:
      1. List of patents, publications or other information
      2. Concise explanation of relevancy
      3. Copy of each relevant item
      4. Translation of non-English documents
    7. Protest raising fraud or other inequitable conduct: entered by PTO but not investigated
  4. Claim rejection: basis
    1. Claim interpretation
      1. Given the broadest reasonable interpretation
      2. In light of the specification’s disclosure
      3. Viewed from the perspective of PHOSITA
    2. Rejection under §102/103; MPEP2144.03
      1. Ordinarily, §102 and §102/103 rejections must be based on §102 events and/or applicant’s own admission
      2. In rare circumstances, the examiner may reject under §103 based on “common knowledge”, “well known prior art” or “official notice”, but only when:
        1. The facts can be unquestionably demonstrated
        2. Some form of knowledge on record
        3. If applicant traverses the examiner’s assertion, the examiner must provide supporting documentary evidence
        4. If the examiner is relying on personal knowledge, he must provide an affidavit
    3. Rejection under §112
      1. §112¶1 based rejection: specification lacks
        1. Written description of the claimed invention
        2. Enablement of making or using the claimed invention
        3. Disclosure of the best mode contemplated by the inventor
      2. §112¶2 based rejection
        1. Claim is indefinite (e.g., no antecedent basis)
        2. Claim fails to claim “the subject matter which the applicant regards as his invention”: rejection is based on statements outside the application as filed (e.g., admission)
    4. Rejection based on res judicata: no second bite at the apple
      1. BPAI or a court has finally held a claim to be unpatentable, with no possibility for further review
      2. Unless new evidence is presented
      3. Pertains to the same claim or its equivalent
  5. Claim rejection: action
    1. Office action must set forth: MPEP707.07
      1. Status of every claim
      2. For allowed claims:
        1. Reasons for allowance
        2. Allowable claims except as to matter of form: indicate form defect (objection, not rejection)
      3. For rejected claims:
        1. Reasons for rejection, including statutory basis
        2. Indicate multiple rejection grounds if applicable (reason: economy)
      4. Citation of references whether a claim is rejected or not
    2. Examiner may request information from applicant regarding database to search, relevant publications, patents, applications, etc.  Applicant’s reply must address each request.
  6. Final rejection: MPEP706.07, 706.07(a), 706.07(b)
    1. Rejection is generally made final upon the second OA when
      1. The same rejection is being repeated, whether or not the claims were amended
      2. A new rejection (i.e., based on new ground) is being made of new or amended claims
    2. But it is improper to make a rejection final upon the second OA when
      1. A new rejection is being made of the same claims
    3. Rejection is generally not made final upon the first OA
      1. In general
      2. Application is a continuing or substitute application that was denied entry in the earlier application as including new matter.
      3. Application is a CIP that includes new matter.
    4. But it is proper to make a rejection final upon the first OA when
      1. The application is a continuing or substitute application and
      2. Contains the same invention claimed in the earlier application and
      3. Would have been properly finally rejected in the earlier application.
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