2007 Patent Bar Outline

Patentability
35 U.S.C. §101 Patentable Subject Matter – MPEP §2100

* Living subject matter with human intervention is patentable (includes genetically

engineered material, excludes a human being)
* Mathematical operations without claimed practical application are not patentable
e.g., a data structure per se, updating alarm values
* Product-by-Process – patentability is determined based on the product itself; includes
steps to produce product
* Must have utility – need not show that something is safe or effective for humans –
that is the FDA’s responsibility
* A Utility rejection (§101) should be accompanied by an enablement rejection (§112)
o Utility rejections may be overcome by: reasoning/arguments rebutting logic of
non-utility, amendments to the claims, amendments to the spec that do not add new
matter, evidence from a 132 declaration/affidavit, evidence from printed
publications/patents

§102(a) – known or used before the invention – The invention was [publicly] known or
used by others in this country, or patented or described in a printed publication in this or a
foreign country, before the invention (filing date unless otherwise shown) thereof by the
application for a patent.

* Before the date of invention (not the filing date); must be by 3rd party
* Overcoming a §102(a) rejection
o proving an earlier date of invention – Rule 131 – Swearing behind a prior art
reference; reduction to practice (RTP) before the application filing date, or conception
and diligence from before the prior art reference until RTP
o Showing the Disclosure was Derived from Applicant (Not by another) – use
disclaiming affidavits
o Amend claims, arguments rebutting rejection; priority to an earlier patent
application (provisional, foreign, continuation, divisional)
* Overseas Activities – Activities in NAFTA countries (12/8/93) and WTO countries
(1/1/96) may be introduced to prove earlier conception and RTP
* Declassified Material – Date of declassification is date of publication for 102/103
purposes; may be used as prior knowledge under 102(a) as date of printing
* Abandoned Material – Matter canceled from the application file wrapper of a U.S.
patent may be used as prior art as of the patent date in that it then constitutes prior public
knowledge under 102(a); where the reference patent claims the benefit of a copending but
abandoned application which discloses subject matter in common with the patent, and the
abandoned application has an enabling disclosure of the common subject matter and
claimed matter in the reference patent, the effective date of the reference as to the
common subject matter is the filing date of the abandoned application; may become prior
art when it is properly incorporated by reference in the disclosure of a U.S. application
publication
§102(b) – Statutory Bar – more than one year – The invention was patented or described
in a printed publication in this or a foreign country or in public use or on sale in this
country, more than 1 year prior to the effective filing date for patent.

* What is the effective filing date?

o The date the application is filed with the PTO
o Continuation (§120), Divisional (§121), or International (365(c)) if:
+ Specification contains a specific reference to prior application
+ Prior application supports new claims (§112)
+ Application is filed before patenting or abandonment of prior application
o Provisional application – applicant has up to 12 months to file a non-provisional
application claiming priority or convert the provisional application to a non-provisional
(§111(b))
o Foreign – an earlier filed foreign application CAN NOT be used to overcome a
§102(b) bar
+ Only entitled to §119 foreign filing date if during pendency of US
application:
# Foreign application is identified (application #, country filed, filing date)
# Same inventors
# Same invention
# Foreign application must satisfy, via §112, new US claims
# U.S. application is filed within 12 months of earliest foreign filing
* Can NOT swear behind a §102(b) reference with a 131 declaration
* Can be a reference from the applicant or a 3rd party (anyone)
* Prior art; U.S. patents may be used as prior art as the date of issuance or publication
(not filing); a foreign patent may be used as prior art as the date rights become
enforceable (MPEP §2126.01)
* Printed Publication – must be publicly accessible; when it reaches the public;
catalogued and indexed in a library; confidential disclosures are not printed publications;
published patent applications are printed publication; magazine and other mailed
publications are prior art as the date the publication reached a member of the public
* Public Use – only in this country (the U.S.); can be a public and hidden use, but not a
secret use (if inventor maintains control)
* On Sale – sold or offered for sale in this country; test – offered for sale AND ready
for patenting
o Offer – need not be accepted; details about product do not have to be disclosed;
offer can be by anyone; sale need not be public – exception –where a patented method is
kept secret, but there is a sale of the product from the method, such a sale is a bar if made
by the patentee, but not a bar if the sale is made by a 3rd party.
o An offer to assign rights to patent is NOT an offer that will bar a patent
o Date is when offer is mailed
o Ready for Patenting – RTP – invention is physically built and tested (known to
work for intended purpose) OR enabling drawings or other descriptions
o Experimental Use – subjective intent of inventor –perfecting invention to see if it
will work for intended purpose; extent of control is a key factor
 * Overcoming a §102(b) rejection – amend claims; argue claims are distinguishable
from prior art; experimental use; earlier filing date (provisional, continuation, divisional)
* NEW AIPA §122(b) – U.S. patent applications shall be published 18 months from
the earliest filing date (domestic and foreign priority included) sought; except:
o Apps no longer pending; subject to secrecy; provisional applications; design
applications; if applicant certifies that the invention disclosed has not and will not be the
subject of a foreign patent application (non-publication request)
o Non-publication request must be issue at time of filing of application and
statement that application has not been and will not be the subject of an application filed
in another country (or under international agreement) that requires eighteen-month
publication

§102(c) – Abandonment – inventor intended to abandon invention. Inventor must intend

to dedicate his invention to the public – delay in the application process is not sufficient
proof for abandonment.

§102(d) – Foreign Prior Art

* A statutory bar if:

o Applicant files a foreign application more than 1 year before U.S. application;
AND
o Foreign application issues before U.S. application is filed
+ A published application is NOT a patent
+ Same invention must be disclosed in foreign application
+ Same applicant, legal representative, or assigns

§102(e) – New AIPA – Disclosure In Earlier Filed Applications

* Effective November 29, 2000

* A person shall be entitled to an invention unless
(e) the invention was described in (not necessarily claimed)

1. An application for a patent, published under §122(b), by another filed in the US

before the invention by the applicant, except that the international application (IA) filed
under the treaty … shall have the effect under this subsection of a national application
published … only if the international application designating the US was published … of
such treaty in English; or
2. A patent granted on an application for patent by another filed in the US before
the invention thereof by the applicant for patent, except that a patent shall not be deemed
filed in the US for the purposes of this subsection based on the filing of an international
application filed under the treaty defined in section 351(a)

* US Patents can claim the benefit of an IA prior art date and have the IA filing date if:
 o IA was filed on or after 11/29/00; the IA designated the US; and published in
English
o US Application Publications – is prior art of the application’s US effective filing
date, which can include an IA filing date, if it meets above 3 conditions

§102(f) – Derivation from Another

* The inventor did not himself invent the subject matter sought to be patented
o Ex parte rejection under 102(f) requires derivation, which usually requires
complete conception by another and communication of that conception by any means to
the party charged with derivation prior to any date on which it can be shown that the one
charged with derivation possessed knowledge of the invention

§102(g) – Prior Invention (basis for interference practice)

* The first to reduce to practice wins unless 2nd to RTP can prove earlier conception
AND diligence from time prior to first’s conception to subsequent RTP or filing
* Publications are not constructive RTP
* Rule 131 can be used to swear behind prior art
* Senior Inventor/Party is the entity that has the earliest effective filing date
* Ex parte rejection under 102(g) if: (1) the subject matter at issue has been actually
reduced to practice (conception is not enough) by another before the applicant’s
invention, and (2) there has been no abandonment, suppression or concealment
* If inventor does nothing over a period of time to develop or patent his or her
invention, the inventor ridicules another person’s attempts to develop that invention, and
the inventor actively shows interest in promoting and developing the invention only after
successful marketing by another of a device embodying that invention will be considered
abandonment

§103 – Obviousness

* Level of ordinary skill in the pertinent art, or reasonable pertinent to problem

inventor was trying to solve MPEP 2141; at the time the invention is made
* Combining references – there must be some motivation to combine; the suggestion
does not have to be explicit; the reason the reference suggests for combining can be
different from the actual reason
* Invention as a whole must be considered; not an element by element analysis of
differences
* Absence of property which a claimed invention would have been expected to possess
based on the teachings of the prior art is evidence of unobviousness
* Objective Considerations – affidavits or declarations containing evidence of:
commercial success, unexpected results, failure of others, long felt need, skepticism of
experts, copying by others
* 102(e, f, g) cannot be used as a reference (New AIPA) for obviousness when the
reference subject matter and the patent application subject matter were owned by the
same person or assignable to the same entity at the time invention was made for any
application, including utility, design, plant, continuation, reissues filed on or after
11/29/1999. RCEs of application filed before 11/29/2000 do not qualify.

§112 First Paragraph; Specification – MPEP §2100

* Specification must contain: written description, enablement, and best mode

* New matter cannot be added by amendment to an application’s disclosure after its
filing
* If provisional or foreign application supports the claims, the invention is entitled to
priority of previous application
* Written Description – Applicant’s specification must reasonably convey to those
skilled in the art that the Applicant was in possession of the claimed invention
* Enablement – The specification must describe to one skilled in the art how to make
and use the invention as of the filing date without undue experimentation
o Undue Experimentation Factors: breadth of claims, nature of the invention, state
of the prior art, and level of ordinary skill in the art
* Best Mode – must disclose best mode that was known at the time the application was
filed
* Lack of agreement between claims and specification and a claim that omits essential
material are 112, 1st paragraph deficiencies

§112 Second Paragraph; Claim Requirements – MPEP §2100

* The definiteness requirement – Claims must particularly point out and distinctly
claim the subject matter which the applicant regards as his invention; must clearly portray
the metes and bounds of the invention
* The use of “for example” and “such as” are usually indefinite
* Antecedent Basis is needed, unless the scope of the claim could be reasonably
ascertained by a skilled artisan. Also, if there’s an inherent part of an object, the use of
‘the’ instead of ‘a’ is appropriate e.g., the center, the edge
* Markush Groups – Valid form of alternative expression – “selected from the group
consisting of A, B AND C”
* Product AND Process claims where both are used are indefinite
* Means for limitations with no corresponding structure, materials, or acts are
indefinite under 112, 2nd paragraph; claims that fail to interrelate essential elements are
deficient under 112, 2nd paragraph
* Evidence in the application file (excluding the specification) may lead to a rejection
under 112, 2nd paragraph if Applicant is not claiming subject matter regarded as the
invention

§112 Sixth Paragraph; Means Plus Function Claims

* Examiner must interpret the claim as limited to the structure, materials, or acts
disclosed in the specification
* Is the element of the claim set forth by the function it performs, rather than by the
specific structure that performs the function?
* Look for “means for”, there are others too, “a step for”, etc.
* If no corresponding structure in specification, claim should be rejected under 112,
2nd paragraph

Patentability – Examiner has burden to prove unpatentability by preponderance of the

evidence (i.e., 51%)
Examination of Applications
Rejection of Claims

* Rejection of claims is based on subject matter, the substance – subject to appeal

* Objections are based on the form and may be reviewed only by petition
* New matter in specification is objected to; new matter in the claims is rejected to
under 112, 1st paragraph as not enabling.
* Foreign Filing License – US application will be rejected if applicant files in another
country before receiving filing license (if invention made in US)
o Automatically after 6 months from filing date
o Get retroactively if: petition (countries filed, dates, not secret, license was
diligently sought, filing was in error without deceptive intent) and fee
* Final Rejection
o second or later rejection, unless: new rejection of claim that was not added or
substantively amended; rejection is based on newly cited art other than info submitted
and IDS
o first action in a continuing or substitute application, if all claims are to the same
invention as the parent application and could have been finally rejected in parent or
rejection of claim was necessitated by amendment
o final rejection is NOT proper where it is made: first OA in a CIP and at least one
claim includes subject matter not present in parent; first OA in a substitute or continuing
application containing material presented after final rejection in an earlier application but
was denied entry based on new matter
o Prematureness of Final action is reviewable by petition under 181 and should be
submitted while the application is pending before the Examiner
* Appeal – you may appeal after two or more actions on the merits; and after any final
rejection; if any claim in an application is properly appealable, the entire application is
appealed
Order of Examination MPEP §708

* General – first come, first served. Applications are examined in order in which they
are filed in the US.
* Special – made special by petition; reissued apps; transferred to different examiner;
interference; ready for allowance; ready for final rejection; pending more than 5 years;
reexaminations
* Petitions to make Special – in writing, identify application by number and filing date
o Petitions that DO NOT require a fee:
+ Applicant’s health (w/ doctor’s certificate or statement); Applicant is 65 or
over; invention will materially enhance the quality of the environment; invention will
materially contribute to energy resource development or conservation
o Petitions that DO require a fee:
+ Safety of recombinant DNA research; superconductivity; HIV/AIDS or
cancer; counter-terrorism; biotechnology (small entities); and
# Prospective manufacture (w/ statement alleging): sufficient
capital/facilities; will not manufacture w/o granted patent; will manufacture if patent is
granted; AND made a prior art search or has good knowledge of prior art
# Actual infringement (w/ statement alleging): infringing product/method is
on the market/in use; comparison to claims made; AND search of prior art or good
knowledge
# Any new (not previously examined) application if: claims are to a single
invention; a search was made; provides copies of closest references; AND provide
detailed discussion of references and why claims are patentable over them. If not met,
applicant gets a second chance to try to meet them.

Suspension of Action by Examiner MPEP §709

* By Applicant
o 1.103(a) – may be allowed on petition if: good and sufficient cause; applicant
must specify time of requested suspension (not to exceed 6 months); must pay fee (unless
PTO’s fault); no response can be due from applicant (i.e., no outstanding Office Actions)
o 1.103(b) – may be allowed by request if: filed along with a request for CPA;
must specify time of requested suspension (no more than 3 months); fee
o 1.103(c) – may be allowed by request if: filed along with a request for continued
examination (RCE); specify time requested (3 months); fee
o 1.103(d) – Deferral of Examination of Application; maximum of 3 year deferral
from earliest filing date from which benefit is claimed; fees; won’t be granted after
mailing of office action or notice of allowance; must be in condition for publication; no
non-publication request; regular (utility) and plant apps or international application that
entered national stage – on or after Nov 29, 2000
* By PTO – Maximum period is 6 months; office will notify applicant
o Suspension for public safety or defense if: application owned by US; publication
may be detrimental to public safety; AND appropriate agency requests suspension
 o Suspension for Statutory Invention Registration (SIR) if: PTO accepts a request
to publish an SIR in the application
* Overlapping Applications by Same Applicant or Assignee

Period for Reply MPEP §710

* Due dates are calculated from PTO mailing date

* Extensions of time (EOT) cannot exceed the 6 month statutory period for Office
actions
* If a timely reply is not filed, application is considered abandoned
* An authorization to charge all required fees to a deposit account will be treated as a
constructive petition for extension of time
* Notice of Allowability, Notice of Allowance – time is not extendable (3 months) for:
submitting an oath or declaration; submitting formal drawings; paying issue/publication
fee

Requirements for Information MPEP §704.10

* Examiner may require (from inventors, assignees, and other under individual
identified under 1.56(c), the submission of information that is reasonably necessary to
properly examine or treat the matter (including: reissues, patents, reexams)
* Any reply that states that the information required to be submitted is unknown or is
not readily available will be accepted as a complete reply – safe harbor
* Applicant generally has 3 months to reply if it comes with OA and 3 months if it
comes separately; EOT’s are available; if no reply – abandoned
* After applicant’s reply – examiner must respond within 2 months of receipt;
examiner may not make next action a final rejection if it relies on the new material

Request for Continued Examination (RCE) MPEP §706.07

* Provides a way for an applicant to obtain continued examination of an application

after prosecution has closed by filing a submission and paying a fee. If a subsequent
action is made final, an applicant can get continued examination again by filing
submission and fee. No limit as long as done before abandonment.
* RCE is NOT available for:
o Adding new matter to an application (must use a CIP for that)
o Provisionals
o Design applications
o Patents under reexaminations (reissues are okay)
o Patents and international apps filed before June 8, 1995
o Application after the filing of notice of appeal or civil suit unless appeal or suit is
terminated while application is still pending
* What is needed to get RCE?
o Prosecution must be CLOSED: application is under appeal; last office action is
final; notice of allowance; Ex Parte Quayle; or another action that closes prosecution
o Applicant must request RCE by filing a submission and fee PRIOR TO the
earliest of the:
+ Payment of the issue fee (unless petition to withdraw is granted)
+ Abandonment of application
+ Filing of notice of appeal or start of civil suit (unless terminated while
application is still pending)
o RCE is entitled to benefit of a certificate of mailing (CPAs are not)
o A request for a CPA filed in an application having a filing date on or after May
29, 2000 for which CPA practice is not available (utility) will be treated as a RCE
* Submissions with a request for RCE
o Allowed: IDS; amendments to specification/claims; arguments in a previously
filed appeal or reply brief submitted in reply to a final rejection
o Not allowed: appeal briefs under §1.192; reply briefs under 193(b)
o If a reply to an OA is outstanding, submission must meet requirement of §1.111
in order to continue prosecution. Payment of the fee for an RCE does NOT toll the
running of any time period set for reply.
* What does RCE do?
o PTO will withdraw the finality of any Office action
o Will be treated as a request to dismiss an appeal and reopen prosecution if filed
after filing of the Notice of Appeal but prior to decision even if RCE is improper
o If filed after a decision but before filing an appeal, it will serve to reopen
prosecution. However, applicant must submit arguments, amendments, or a showing of
facts as to why any rejection upheld or suggested by the Board should be removed

Abandonment MPEP §711

* Abandonment of an application (not of an invention)

* Failure to Reply
o If an applicant fails to respond within the appropriate time periods, the
application will automatically become abandoned
o If applicant replies within the time period but the reply is not fully responsive, the
application still may be abandoned (extension of time may be given if response appears
to be a bona fide attempt to respond)
* Express Abandonment
o How is it done?
+ by filing a written declaration identifying the application; however:
+ express abandonment of the application may not be recognized by the Office
unless it is actually received in time to act before date of issue or publication
+ for express abandonment after receipt of Notice of Allowance, applicant
should submit declaration along with a petition to withdraw the application from issue
and fee
o Who can do it?
+ Applicant (with Assignee’s consent)
+ Owner/Assignee
+ Attorney/Agent of record
+ Attorney/Agent Not of record, who acts in a representative capacity when
filing a continuing application, may expressly abandon the prior application as of the
filing date granted to the continuing application
* Special Abandonment Situations
* Termination of Proceedings – terminated when:
o Issue fee is not paid when due (can be revived if fee is accepted with petition)
o Application in a interference where all claims corresponding to the count lose
o After decision by Board or court
* Revival of Abandoned Applications
o Petition to revive abandoned application (1.137) – should be filed within 2
months from abandonment or is untimely;137(a) for unavoidable or 137(b) for
unintentional delay; petition must be accompanied by the required reply; reply may be a
RCE, submission, and fee

Interviews MPEP §713.37

* Interviews in conference room, videoconferencing are allowed (amended)

* No interviews before first OA unless in a continuation (or CPA) or substitute
application
* No fee for interviews even if after time for reply
* Examiner may require that an interview be scheduled in advance
* No right to an interview after a final rejection
* Not normally allowed after filing an appeal brief
* Who can interview?
o Inventor/applicant
o Registered attorney/agent
+ Of record, or
+ Using his file, or
+ Known by examiner to be local rep of record attorney
* After an Interview: applicant must ensure the substance of the interview is made of
record in the application – often the examiner agrees to do it. Full response to OA is still
required.
* If examiner thinks applicant’s statement is not complete, he may give the applicant a
1 month time period to complete the reply

Amendments and Other Actions by Applicant MPEP §714

* Amendment; Request for Reconsideration; Notice of Appeal

* Requirements of Response – every response must:
o Reply to every rejection and objection in Office Action
o Be a bona fide attempt to advance case to final action
o Be in writing, typed or written in permanent ink and proper size paper
o Be properly signed by: Applicant(s); Owner(s); Attorney of record; or attorney
not of record but acting in representative capacity
* The entry of second or supplemental responses is discretionary with the PTO
* Non-responsive, bona fide reply
o If intentional, must remedy within statutory period to avoid abandonment
o If unintentional, examiner can either accept it or require reply within remaining
period or set a new 1 month time limit (extendable); new time limit cannot be given after
final OA
* Types of Amendments
o Preliminary Amendment – received by PTO before first OA is mailed
+ Not considered part of original disclosure unless filed with original
application and oath refers to both the disclosure and PA
+ Should be filed after application receives application number and filing date
if not filed with original application
+ Should be filed with original application if claims are canceled to reduce the
filing fee
+ For CPA’s, preliminary amendments must be filed on the filing date of the
CPA
+ A preliminary amendment will not be entered if it cancels all claims and fails
to simultaneously submit any new claims
+ A preliminary amendment generally will not be disapproved if it is filed no
later than:
# 3 months from filing date;
# filing date of CPA; OR
# 3 months from date the national stage is entered.
# NOT extendable time periods
+ Factors to be considered in whether a preliminary amendment “unduly
interferes” with preparation of first OA: nature of changes to claims or spec that would
result from entry of amendment; state of preparation of first OA as of date of receipt or
pre. Amendment
o Amendments after Final Rejection – no unrestricted right to entry of amendments
after final rejection unless:
+ Amendment cancels claims or complies with objections as to form
+ Places case in condition for allowance or better form for appeal by removing
issues
+ Adopts suggestions by examiner
+ Period for reply cannot be extended more than 6 months from the date of the
final action
+ If applicant replies within 2 months from date of mailing of final rejection,
and the PTO does not issues an advisory action until after the end of the 3 month
shortened period for reply, any extension fee will be calculated from the mailing date of
the advisory action
+ If applicant submits a complete replay within 2 months from date of mailing
of final rejection and an Examiner’s amendment is needed to place the application in
condition for allowance, amendment may be submitted any time before the 6 month
statutory period end w/o an extension fee.
o Amendments After Allowance of All Claims – you have no right as a matter of
law to have an amendment entered after mailing of Notice of Allowance – it’s a matter of
grace, good and sufficient reason with a petition and fee
+ If amendment is received in PTO before NOA is mailed, but does not get to
examiner until after NOA is mailed, it has same standing as if NOA was not mailed
+ If filed after NOA, must also submit a showing as to: why it’s necessary; why
it requires no additional search or examination; why claims are patentable; why claims
were not presented earlier
+ A supplemental oath or declaration is NOT treated as an amendment except
when submitted in a reissue after NOA

131 Affidavit or Declaration of Prior Invention MPEP §715.37

* Purpose is to prove that applicant was the first inventor when faced with a reference
dated earlier than the application filing date
* Constructive RTP – filing a US patent application complaint with 112
* Actual RTP – when the invention is successfully performed
* Needed when any claim of an application or patent under reexamination is rejected
based on prior art before the date of invention
* Who may file?
o Inventor
o Assignee (when affidavit from inventor cannot be produced)
o Owner of patent under reexam
o Party qualified when inventor is dead, insane, or refuses to sign
* What may be filed?
o Oath or declaration established invention of the subject matter
o If conception – applicant must SHOW (alleging is not enough) evidence of facts
establishing diligence
* Geographical Limitations – prior invention may not be established under this section
before Dec 8, 1993 in a NAFTA country or before Jan 1, 1996 in a WTO country.
* Swearing behind can not be used if:
o The rejection is based upon a US patent claiming same invention (interference)
o Cannot alleviate a Statutory bar (102(b,d))
* Must be filed before final rejection; before appeal; after final rejection and submitted
with a first reply after final for the overcoming a new ground of rejection or with a
satisfactory showing under 116 or 195; under 129

132 Affidavits or Declarations Traversing Rejections MPEP §716.37

* Purpose is to demonstrate any fact to justify patentability; e.g., commercial success,

unexpected results, the cited reference is the applicant’s own work or was derived from
applicant
* Needed when claims are rejected or objected to
* Objective evidence considered for 103 rejections: comparative date; unexpected
results; commercial success; long-felt but unsolved need; failure of others; skepticism of
experts, etc.
* Opinion evidence is also entitled to be considered
* May not be submitted if the rejection is based on a US patent to others claiming same
patentable invention (interference, double patenting)
* Must be timely filed: before final rejection; before appeal; after final rejection and
submitted with a first reply after final for the overcoming a new ground of rejection or
with a satisfactory showing under 116 or 195; under 129
* Attorney arguments cannot take the place of objective evidence
* Presumptions of validity must be rebutted by a preponderance of evidence

Public Use Proceeding MPEP §720 - a proceeding to determine whether an invention

claimed in an application had been in public use or on sale over 1 year before filing of
application

Trade Secret, Proprietary, and Protective Order Material MPEP §724

* Proprietary information can be submitted if it is believed to be material to

patentability:
o If it is material, it will be made of record in application
o If it is NOT material, it will be resealed and retained in case applicant files a
petition to expunge
o Will not be made available to public until issuance of the patent
o Info submitted in reissue or reexams will be sealed. If important to reasonable
examiner, it will become permanent part of application; if not, it will be resealed pending
possible petition to expunge
o Info that is only favorable to patentability should not be submitted
* Petition to expunge information: must have fee; available for:
o Information properly submitted that was not found to be material
o Info unintentionally submitted in application
o Info submitted in incorrect application
o Cannot be used for info forming part of the original disclosure, however,
applicant can try to petition for a waiver to get originally filed material expunged

Parts, Form, and Content of U.S. Patent Applications

The Application

* Specification:
o Title (500 characters max). Title must be technically accurate
o Abstract (separate sheet – 150 word max). Abstract should be a concise
disclosure of that which is new and should not compare invention with prior art; Abstract
may be used to interpret claims, is considered part of the written description under 112,
1st paragraph, and may be amended by Examiner’s amendment instead of issuing Ex
Parte Quayle
o Brief Summary. Directed towards subject matter of the invention and not the
disclosure as a whole. Summary should be consistent with subject matter of the claims.
* Format of Specification MPEP §608.01
o Formulae and tables may be in the specification. Drawings and flow diagrams
must be on separate sheets.
o Real examples should be described as “was” done. Prophetic examples should be
described as “is” done.
* Drawings
o Application may be filed with informal drawings
o Formal drawings are normally required within 3 months after mailing of Notice
of Allowance (not extendable)
o Must show every feature specified in the claims
o Drawings submitted after filing date may not be used to cure insufficiency of
disclosure, e.g., lack of enablement
o Photographs and ink drawings may not be included in same application and
photographs must not show environmental structure (design patents)
o If a claimed invention is capable of being illustrated by drawing and is not,
Examiner may require such drawing
o Color photographs may only be submitted after petition is granted with 3 copies,
statement in specification, and fee
* Claims Fees; Refund of Fees
o Basic filing fee includes 3 independent claims and 20 total claims
o Claims fees are not refundable
o Non-elected claims in a restriction requirement must be cancelled or paid for
o Multiple dependent claims count as at least two D claims; extra fee applies
o Improper MDC count as a single dependent claim
o Fees Paid by Mistake – may be refunded. Must be requested within 2 years.
Small entity requests must be made within 3 months of the payment of fee. PTO will not
refund $25 or less w/o request. Payment issued from credit account will be credited back
to originating credit account
* Complete Applications:
o Non-provisional (regular) – spec (at least one claim); drawings where required;
oath/declaration; filing fee
o Provisional – cover sheet; spec (need not include any claims); drawings where
required; filing fee
* Filing Date Requirements – to receive a filing date:
o Non provisional (regular) – adequate specification with at least one claim,
drawings if necessary
o Provisional – specification, drawings
o CPA – separate request for CPA; should file response to last OA
o If application doesn’t meet requirements, applicant can petition to have a filing
date assigned
o If application meets these minimum requirements, but is incomplete (e.g. missing
oath or fee), the applicant will be sent a notice to file missing parts (usually has 2 months
from filing date, extendable for a total of 7 months)
o There is no requirement that the inventors be named. PTO requests a “numeric
identifier” in cases where inventors are not known.
 * Incorporation by Reference – mere mention of another document without language
of incorporation is not sufficient to incorporate the doc by reference.
o Essential material – may be incorporated by reference to a US patent, US
application publication, pending US application or abandoned application less than 20
years old; may not incorporate essential material that itself incorporate essential material
o Nonessential material – may be incorporated by reference to a non-US patent or
to a published document (no hyperlinks)
* Correspondence Address – PTO requires one – to make a change:
o Before a declaration of any inventors has been filed, the correspondence address
may be changed by a registered attorney named in transmittal letter, or ANY of the
inventors. If assignee or party who will be assignee filed the application, they may
change the correspondence address
o After a declaration, the correspondence address may be changed only by a
registered attorney of record, an assignee, or ALL of inventors (unless there’s an
assignment of entire interest and that assignee has been made of record)
o If the attorney changes his address, he must file a separate paper in each
application, unless the ‘ca’ is to a customer number

Conversion between Provisional and Non-Provisional Applications

* Non-Provisional (regular) to Provisional

o Must be within 12 months from application filing date
o Prior to abandonment or payment of issue fee
o Prior to request for statutory invention registration
o No refund of fees. To convert, you need: a request for conversion and fee
* Provisional to Non-Provisional (regular) (as opposed to claiming priority)
o Must be filed within 1 year for filing date and prior to abandonment
o Fee
o Application filing fee (may be filed after conversion date)
o Amendment including at least one claim (unless already a claim)
o Oath or declaration (may be filed after conversion date)

Oath/Declaration/Power of Attorney/Data Sheet

* General Requirements of Oath/Declaration: oath is notarized, declaration has

statement that willful misrepresentation is punishable by law and need not be notarized
o Declaration must be in permanent ink
o Must identify each inventor (first and last), and countries of citizenship
o Statement that inventors signing ‘believe to be first...’
o Identify application
o State that oath giver understands contents and duty to disclose
o Unless the following is provided in application data sheet, oath must provide:
 + Inventors’ mailing addresses and residence if different
+ Application number, country, day, month, year of any foreign application to
which priority is claimed
o If the declaration is filed with the application, it must include one of:
+ Name of inventor(s), and reference to an attached spec which is both attached
to the oath or declaration at time of execution and submitted with o/d on filing;
+ Name of inventor(s); and attorney docket number which was on spec as filed;
or
+ Name of inventor(s); and title of invention which was on the spec as filed
o If the declaration is filed after the spec, it must include one of:
+ Application number;
+ Serial number and filing date;
+ Attorney docket number which was on the spec as filed;
+ Title of invention and reference to an attached spec which is both attached to
o/d at time of execution and submitted with o/d; or
+ Title of invention and with a cover letter identifying the application for which
it was intended by either application number or serial and filing date
o If applicant(s) cannot read English, o/d must be in their language and translated
or be on a PTO form
o It is improper for an applicant to sign o/d which is not attached to or does not
identify specification and/or claims
o An attorney may not sign on behalf of inventor
o No amendments to spec after declaration has been executed
o Initialized and date alterations may be made before execution; non-initialized and
dated alterations are not in accordance with rules
o If person is not the inventor, the o/d must state their relationship
o If inventor changes name, a 1.182 petition must be filed to change name
* Copies of Oath/Declaration – may be filed in lieu of original signatures (including
fax)
o A new Oath/Declaration need not be submitted in a continuation or division if:
+ Prior application contained proper Oath/Declaration
+ Filed by all or fewer than all of the inventors named previously
+ No new matter is added (not a CIP); and
+ Copy of Oath/Declaration filed previously is submitted.
+ If co-inventors are removed in continuation or divisional, a copy of the
previous declaration may be filed, but a statement requesting deletion of the omitted
inventors must accompany the submission
* Application Data Sheet – 1.76 encourages applicants to submit an application data
sheet containing bibliographic information:
o Applicant info, correspondence info, application info, representative info,
domestic priority info, foreign priority info, assignee info
o A supplemental data sheet may be submitted to correct info previously supplied.
Only to be used to correct new info, not inventorship, citizenship, or correspondence
address
* Inconsistencies between Oath/Declaration and Application Data Sheet
o The o/d always governs names and citizenship.
 o The application data sheet governs when submitted simultaneously with the o/d;
o The latest filed document is controlling
* Supplemental Oath/Declaration
o Generally required when defect in o/d as filed. Only the inventors as to whom
the o/d is defective must submit a supplemental document
o One may file an application data sheet to correct errors in some new matters
(mailing address, foreign priority claim), instead of new dec.
o A supplemental o/d can be required under rare circumstances

Information Disclosure Statement

* Applicant must disclose information that is “material to patentability”, usually done

with an IDS
* No need to perform a search
* IDS’s are not permitted in provisional applications; nor are they permitted in the
international stage of a PCT application
* Content
o IDS’s must contain: a list of materials (patents, publications, other references)
cited; legible copies of materials cited; if portion of a reference is cited, only such portion
must be submitted
+ If not in English, must have: concise explanation of the relevance; or an
English translation; can be satisfied by submitting English language version of foreign
search report
o How should references be cited:
+ US Patents: inventor, patent number, issue date
+ US Patent application publication: applicant, patent application publication
number, publication date
+ US application: inventor, application number, filing date
+ Foreign patent or published foreign patent application: country or patent
office which issued patent or published application, document number, publication date
+ Publications: publisher, author (if any), title, relevant pages of pub, date,
place of publication
o A Form PTO-1449 is used. Examiner reviews, initials, and returns a copy
* Time for Filing
o May be filed freely during: first three months after filing or entry into national
stage; prior to first office action on the merits
o Three month grace period does not apply to RCE/CPA – only before first OA
o After these periods, IDS can be filed before a final OA/notice of allowance/other
action terminating substantive pros; with fee or statement
+ Info was disclosed in communication for foreign patent office no more than 3
months before filing of IDS; or
+ no info was known 3 months prior
o After final OA or NOA, must include both fee and statement
o Once issue fee has been paid, no IDS will be accepted
* National Stage Applications – ordinarily, an IDS is not necessary for references that
were cited in the international stage proceeding, but if a continuing application is filed,
copies of the references must be cited

Third Party Submission – Rule 99

* after publication of an application, a third party may submit materials for

consideration

* the submission must include: identify application by application number; fee; list of
patents or publications submitted for consideration, including date of publication; copy of
each listed patent or pub, or at least relevant parts; English language translation
* submission must be served upon applicant
* must not have any discussion/arguments/highlighting/etc.
* limited to 10 references
* must be made earlier of within 2 months of publication date, or prior to NOA
* may be submitted later, but only if references could not have been submitted earlier –
with fee
* does not guarantee that references will be considered
* Applicant should always submit IDS with same references
* Ex parte in nature, no additional correspondence with submitter

Type and Status of Applications

Multiple Dependant Claims

* Multiple Dependant Claims – dependant claims that refer back in the alternative to
two or more claims
o MDC may not depend on another MDC, nor can it refer to different sets of
claims (e.g., apparatus and process)
o If MDC references a groups of claims (e.g., “the proceeding claims”, claims 1-4,
claim 1-4 or 5-8), MDC must use alternative language such as “any” or “one.” e.g., A
gadget as in any preceding claim, a gadget as in one of claims 4-7 so as to be in
alternative form.

Provisionals

* Establishes a filing date for the subject matter contained in the application
* To establish priority, non provisional application must be filed within one year
* Claim of priority must be filed within later of four months from the regular filing
date or sixteen months from the provisional application filing date – translation of non-
English provisional must be filed then too
* Regular application must have at least one inventor in common with provisional
* Regular application must contain a cross-reference to prior provisional
* Pendency is extended to next business day
* If applicant fails to make priority claim within 4/16 months, he may petition to
accept an unintentionally delayed claim. This petition requires a fee and statement that
the entire delay between due date and date filed was unintentional
* A provisional can never claim priority to another application
 * A design application may not claim priority to a provisional
* Contents of a provisional:
o Specification and drawing (if necessary)
o Cover sheet – identify application as a provisional and provide following:
+ Name of all inventors
+ Inventor residence(s)
+ Title of invention
+ Name and reg. # of attorney and docket # (if applicable)
+ Correspondence address
+ Any government agency that has a property interest in the application
o Fee is required
o Claims are not required. No oath/declaration or IDS is required.

Continuing Applications

* Must be filed during the pendency of a prior application (e.g., before patenting or
abandonment); multiple continuing applications are allowed
* Continuation
o Directed towards the same general invention as parent
o Filed during pendency (before patenting, abandonment, or termination of
proceedings)
o Discloses same or less subject matter
o Has at least one common inventor with parent
o Contains a cross reference to parent
o If filed on or after Nov 29,2000, the claim for benefit must be made within later
of 4 months from filing date of application or 16 months from parent filing date
* Continuation-In-Part (CIP) – adds new matter; other requirements are the same as for
a continuation; filed only under 1.53(b)
o The effective filing date of a CIP is determined by the date on which the claim
first finds support; analyzed on a claim by claim analysis
* Divisional Application – application for an individual or distinct invention ‘carved
out’ of the parent. It may only disclose and claim only subject matter disclosed in the
parent. Other requirements are the same as continuation.
o Inventorship may change upon filing a divisional; overlap of inventors is
measured as of the original filing date of application
o A design application may filed as a division of a regular application if the
drawings in the original application sufficiently disclose the claimed design
* Continued Prosecution Application (CPA) – the pending application must be:
+ Regular or plant filed on or before May 29, 2000 (irrespective of any priority
claim)
+ An international application (may 29) that has entered national stage
+ Design application of any vintage
+ Filed only under 53(d)
o A continuation or divisional (but not CIP) may be filed via CPA
o The inventors may be the same or fewer as those of the parent application.
Presumption of identical, unless statement requesting deletion
 o Causes parent application to become abandoned automatically
o Applicant will not be allowed to amend the first paragraph of the application to
add a cross reference
o Only a request is filed – no new spec is needed
o The filing date is the date on which the requesting paper is received
* Other Continuing Information
o Obviousness-type double patenting rejection – asserts that claims presented in
multiple apps should have been presented all in one application
o Papers submitted in a parent do not automatically become part of the continuing
application (unless it’s a CPA). Such documents can be copied and refilled – including
small entity assertions in parent
o An assignment of a parent application carries title to any divisional, continuation,
or reissue application filed after the date of assignment. (CIP’s are ambiguous)
* Statutory Invention Registration – not a patent; no rights granted; serves as prior art
as date of publication

Inventorship – inventors only get credit if they contribute to the conception of the
claimed invention

* Provisional applications are determined on the basis on disclosure; as opposed to the

claims

Correction of Inventorship – Rule 48 – 201.03

* Errors in inventors originally named

o Oath/Declaration already filed: request to correct; statement from each person
being added and from each person being deleted that error was without deceptive intent;
O/D by actual inventors; fee; if assigned, written consent of assignee
o O/D not yet filed: file o/d that names the proper inventive entity
* Cancellation or Amendment of Claims requires removal of Inventor from inventive
entity
o to remove, if o/d has been filed: request signed by e.g., attorney, practitioner;
identification of inventor being deleted; acknowledge that inventor’s invention is no
longer being claimed; fee (no statement needed from inventors)
* Amendment of claims requires addition of Inventor
o to add, if o/d has been filed: request to correct; statement from each person being
added that the addition is necessitated by amendment of claims and error was without
deceptive intent; o/d by actual inventors; fee; if assignment, written consent from
assignee
* Provisional with no cover sheet – filing of a cover sheet naming correct inventors
will operate to correct inventive entity
* Provisional – adding inventor after cover sheet filed: request to correct Inventorship
that id’s the inventor being added; error occurred without deceptive intent; fee
* Provisional – deleting inventor after cover sheet filed: request with desired change;
statement be person being deleted that error occurred without deceptive intent; fee; if
assignment, written consent by assignee
 Correction of Inventorship Not Required

* Issuance with Correct Inventors – if the inventive entity is correct as of the issue
date, no correction required
* Typos or other name errors – need not be corrected; can be corrected with a
certificate of correction or request
* Name Change – need not be corrected; distinguished from incorrect inventor

Other Ways to Correct Inventorship

* Court order; reissue (when inventors are not in agreement)

Foreign Priority Claims

* application claiming priority to a foreign application must be filed within 12 months

of the prior application (six months for designs). Time measured from date of first
foreign application.
* a priority claim under 119(e) and 120 establishes an effective US filing date for all
purposes for commonly disclosed subject matter
* a foreign priority claim does not obviate a statutory 102(b) bar, the foreign priority
claim will not help the applicant -- the 102(b) bar is based on the actual US filing date
* Requirements for Foreign Priority Claim

+ NTO or WTO country; foreign application must have been filed by inventor
or his assigns; US application must be filed within 12 months of foreign application’s
filing date; must be same invention; priority claim must be made with submission of a
certified copy of the foreign priority document
# the claim for priority may be filed at any time up to (including) the date of
issuance of patent. should be submitted by payment of issue fee
+ for apps filed in US (or entered national stage) on or after 5/29/2000, the
priority claim must be made within four months of the filing date or 16 months from
foreign filing date (the later) – petition may be filed
+ applicant must claim priority to the first filed application

Publication of Patent Applications

* most patent apps are published 18 months from the earliest priority date under any
claim of foreign or domestic priority
* publication statute applies to any application filed on or after Nov 29, 2000
(including CPA, not including RCE)
* for earlier filed apps, the applicant may request publication (or early pub or reg apps)
* Exceptions:
o apps that are no longer pending (issued or abandoned)
o apps subject to a secrecy order or publication would be detrimental to national
security
 o provisionals; designs; reissues
* Exceptions upon request:
o must be made upon filing of application; request must certify that the invention
has not been and will not be subject of a foreign patent application
o applicant may file a petition with fee to avoid publication of a currently pending
application; may not file a continuing application with a nonpublication request
o if application is filed abroad (after nonpublication request), the applicant must
notify the PTO of foreign filing within 45 days or application will become abandoned.
* Publication format and process
o each utility and plant application must be in condition for publication:
+ contains filing fee and o/d
+ spec of sufficient quality for optical character recognition
+ title and abstract in compliance with 1.72
+ drawings “acceptable” for use in the patent application publication as prior
art document;
+ sequence listing computer-readable form
o if applicant wants publication to be reflected by amendment, applicant must
timely file a copy of the application as amended
o new drawing requirement will not be held in abeyance
o The patent application publication will be based on the EFS copy of the
application if the EFS copy is filed within the later of:
+ 14 months from the earliest claimed priority date; or
+ one months from the application’s actual filing date; or
+ before the PTO has started the publication process; or
+ within one month of the mail date of the first filing receipt indicating the
application’s confirmation number
o The applicant must also file and EFS copy of the application:
+ for ‘voluntary’ publication of an application pending on Nov 29, 2000; or
+ for publication of an application as redacted; or
+ for republication of an application
o If drawings are ‘acceptable,’ applicant may submit better quality drawings for
publication with:
+ an EFS copy of the application; or
+ a petition within the later of 14 months from the earliest claimed priority date
or one month from the actual filing date of application

Patent Cooperation Treaty (PCT) MPEP 1800

General

** a PCT application that designates the US is a US patent application, even if filed in

another receiving office

** the 102(b) statutory bar is measured back from the PCT filing date

** R1.48 may not be used to correct inventorship in a national stage application where
the inventors were named erroneously in the application (i.e., the national stage of PCT
application)

** Section 365 (c) is a special case. An international application (PCT) may be treated as
the parent application until 30 months from the international filing date, and an applicant
may file a continuation application within that time

** For apps filed on or after 11/29/00, if any claim for benefit is made to a prior PCT
application, the first sentence of the spec must state whether the application was
published in the English language; this does not apply to the national stage of a PCT
application

* treaty that establishes a system for filing international patent applications

* only for utility inventions (not design)
* PCT application is published
* may or may not claim priority to an earlier filed application; US application may
claim priority to an earlier filed PCT application

International Applications Filed in US

o Who May File

+ must include one applicant who is a resident or national of the US
+ application must be made in name of inventors
+ must be in English or application is forwarded to International Bureau
o Where to File
+ apps may not be filed via fax
o What to File
+ PCT request
+ to get a filing date, you need:
# indication that at least one applicant is a resident or national
# indication that application is an international application
# designation of at least one contracting state, if the inventor is not also the
applicant, the designation of the United States is invalid.
# name of applicants
# description in English
# drawings
# at least one claim
# if the application designate US, name, address, signature of EACH
inventor (or attorney) and any application to which domestic priority is claimed shall be
included
# indication as to which international search authority
+ abstract and filing fees are typically paid upon filing by may be paid
subsequently
+ the priority claim should be made when filing the application; if priority is to
a prior US application, a certified copy of the priority application to the International
Bureau will be submitted
+ implicitly carries a request for a foreign filing license
 + when the international application is filed with the United States Receiving
Office and the language in which the international application is filed is not accepted by
the United States Receiving Office, or if the applicant does not have the requisite
residence or nationality, the application may be forwarded to the International Bureau for
processing in its capacity as a Receiving Office if accompanied by a fee equal to the
transmittal fee

International Stage

* Chapter I – the following events occur or may occur:

o the ISA determines whether there is unity of invention
o the ISA establishes a search report
o the applicant has one opportunity to amend the claims within 2 months after
establishment of search report
o the application is published at 18 months
o applicant may file a demand for Chapter II proceedings (19 month date)
o applicant may enter the national stage in any designated state (30 month)
o A Chapter II demand may be filed via fax; applicant may demand examination
for all or fewer of the states originally designated; these states become elected states
* Chapter II
o if the applicant files a chapter II demand by the 19 month date, the application
will be subjected to international preliminary examination before an international
preliminary examining authority (IPEA)
o the IPEA will usually issue a written opinion based on the search report and other
aspects of the application (optional)
o the applicant has the opportunity to reply to the written opinion, such reply may
include arguments and amendments to the claims
o the international preliminary examination report (IPER) will issue
o the written opinion will discuss novelty, inventive step, and industrial
applicability, as well as unity of invention and formal matters
o the IPER will provide a statement as to novelty, inventive step, and industrial
applicability; it is not a statement as to patentability
o

National Stage/365(c)

* The applicant must complete the requirements for entering the national stage by the
expiration of 30 months from the priority date to avoid any question of withdrawal of the
application as to that elected Office, however, some elected Offices provide a longer
period to complete the requirements, which are:
o fee
o when required, a copy of the international application and English translation
o when required, amendments made and translation
o o/d of the inventor
 * in practice, usually the fee and cover sheet are all that is required by the 30-month
deadline; further, no certified copy of the priority doc will be required; may not be faxed
* a petition to revive may be filed if the application does not meet the necessary
requirements by the 30-month date
* subject to publication if the PCT application was filed on or after 11/29/00

Receipt and Handling of Mail and Papers MPEP §500

* Addressing of Correspondence – no penalty, expect to the general solicitor, to

addressing the mail to the wrong area within the PTO
* Specific Address: Assistant Commissioner for Patents, Washington, D.C. 20231
* All correspondence except relating to pending litigation can be hand delivered
* Express Mail – if “Post Office to Addressee” service is used, use date of deposit
* Facsimile – fax is usually ok after an application has commenced; the following are
ok via fax: CPAs, amendments, declarations, petitions, issue fee transmittals,
authorizations to charge deposit account
o date stamped on the date that the transmission is complete (next business day)
o if fax is not received, it can still get the date that it should have been received if
sender provides statement that fax was sent and the sender’s report confirming
transmission
o fax is not acceptable for: document that is required by statute to be certified;
application or other doc for obtaining an application filing date; drawings under certain
rules; judge order; interference agreements; some interference correspondence; secrecy
related; international application; copy of application and fee to enter national stage;
request for reexam
* Internet – generally not allowed unless written authorization
o permissible communication: all situations except those which otherwise require a
signature, or replies to office actions. When email is used, a printed copy must be given a
paper number and entered into PALM.
o written authorization is required for PTO employees to communicate via internet
with an applicant for reissues and reexams
* Signature Requirements – original signatures are generally not required
o copies are not permitted for docs that relate to registration practice before the
PTO in patent cases; enrollment and disciplinary investigations; disciplinary proceedings
* Application Number and Filing Receipt – will be assigned to apps upon receipt
o a filing receipt w/ application number and filing date will be returned upon
receipt at the PTO of the spec, including claims, and drawings and is mailed when a
determination is made that the application meets minimum requirements
o for Provisionals, filing receipt will be sent upon receipt of spec and required
drawings. A cover sheet or letter identifying application as a provisional is required to
prevent the provisional from being treated as a regular application
* Postcards – should include: applicant’s name or id number; title; number of pages of
spec, claims, and drawings; if o/d is included; provisional cover sheet (if provisional);
amount and manner of paying the fee
 * Return Receipt of other papers – should be so complete as to clearly identify the
paper for which receipt is requested

* Date of Receipt of Correspondence

o Express Mail – date stamped with the date it is deposited; requires “Express Mail
Post Office to Addressee”
o Facsimile – date stamped on date the transmission is complete
o Certificate of Mailing or Transmission – only applies if paper is received after the
applicable deadline has passed. If date on certificate meets the deadline, it’s considered
timely
+ The PTO will still stamp the correspondence with the actual date of receipt.
This date stamp will be used for all other purposes including calculations of future
deadlines
+ benefits of certificate of mailing do not apply: obtaining an application filing
date, including CPA; interferences; agreements of interfering parties; international
applicationa; UPS or FedEx; etc.
+ Contents: requires a signature; must be attached or part of document; if on
separate sheet, it must be signed and clearly identify the paper it’s with, including filing
date and serial number; each document must have a separate certificate
+ Lost Mail or Transmission – will be considered timely if applicant: promptly
notifies Office the it was sent; supplies a copy of the original correspondence and
certificate; statement that attests on personal knowledge on timeliness
* Completeness of Original Application – to get a filing date
o Regular, Non-Provisional – specification, one or more claims, drawings
o Provisional – specification, drawings, cover sheet
* Payment of Fees
o only fees paid by mistake or in excess of that required at the time of payment are
refundable – provided electronically
o Deposit Accounts – minimum deposit of $1,000 is required to establish an
account; each month the minimum balance must be restored promptly to avoid a $25
service charge; charges to accounts with insufficient funds will not be accepted; the PTO
will immediately suspend an overdrawn account and will not accept any more charges
against it until the proper balance is restored and $10 service charge is paid
+ authorization to charge deposit account – authorization must be clear and
unambiguous; an applicant may make a general authorization that will apply to all fees
that may be addressed during the pendency of the application
o Small Entity Status – 50% reduction of fees for:
+ Independent Inventor
+ Small Business (< 500 employees)
+ Nonprofit Organization
# Applies to following fees: filing fees; EOT, revival petition, and appeal;
issue fees; statutory disclaimer; maintenance fees
# Does not apply to: most petitions and processing fees; document supply;
certificate of correction; request for reexamination; miscellaneous and charges under
1.21; international application, recording fees
+ To claim small entity status – must file statement containing: signature;
statement of qualification as small entity; statement regarding transferred rights; English
language/translation
+ SES must be claimed on each patent application filed by the inventor,
including continuations
+ Refunds for paying full fee are given if statement is filed within 3 months of
the payment of the full fee
+ Exact payment of small entity fee will be considered a claim for small entity
status for basic filing or basic national filing fee only
+ Small entity status claim remains in affect for an application until changed
+ Loss of small entity status must be determined upon payment of issue fee and
maintenance fee

Duty of Disclosure MPEP §2000

* Who has the duty to disclose: each inventor; attorney; assignee; other people
“substantially involved”; organization, firms, etc. do NOT have a duty to disclose since
they are not considered a “person.”
* All information “material to patentability” must be disclosed; excludes favorable
material
* Burden of proof is preponderance of evidence; when info points to the
unpatentability, the claim is prima facie unpatentable
* material information at time application is filed OR if you become aware during
prosecution
* Disclosure must be in writing; if reissue application, disclosure should be filed with
it or within 2 months of the filing thereof
* Members of the public are limited to prior art submissions to protest a pending
application
* Examiners may not investigate deceptive intent
* All claims become invalid or unpatentable where fraud or inequitable conduct is
found regarding to any claim

Allowance and Issue MPEP §1301 – 1309

Termination of Substantive Prosecution

* Review of Disclosure and Examiner’s Amendments – examiner should review

application to make sure it complies with all formal and substantive requirements:
o clear abstract <=150 words; claim renumbering; perform interference search; list
all cited references;
o once application is in condition for allowance and an indication of allowability is
mailed, the applicant has no further right to substantive examination of application
* Notice of Allowability
o terminates substantive prosecution
o if applicant broadens claims (anything that would require a new search), must file
a continuing application or RCE
 o no amendment as a matter of right
o applicant has right (not duty) to respond if Examiner gives reason for allowance,
but must respond by payment of issue fee
o apps in condition for allowance except as to form are considered special and
formal matters must be handled w/in 2 months
* Formal Notice of Allowance and Fee Due (NOA)
o starts three month clock for payment of issue fee
o if examiner includes reasons for allowance, applicant may respond and if
applicant does not respond, lack of response may indicate agreement with Examiner
o Applicant has no right to amend, but can:
+ file RCE with fee (stops 3 month clock);
+ file continuing application; or
+ file CPA (for utility/plant before 5/29/2000 or design)
o Applicant has three months from mailing date of formal NOA to:
+ pay issue fee – NO extensions of time – if payment is late, it’s abandoned,
must file petition to revive under 1.137
+ submit formal drawings (no EOT)
+ submit response to reasons for allowance
+ submit a priority claim

Changing the Application After Allowance

* Amendments after NOA

o no amendment as matter of right
o no broader claims allowed – would require a new search
o before issue fee is paid:
+ need good and sufficient reason why claims were not presented earlier; why
amendment is needed; why no more search or examination is required; why claims are
patentable
+ good and sufficient reason should: amendment is needed for proper
disclosure or protection of invention; and amendment requires no substantial amount of
work for PTO
o after issue fee is paid:
+ must have good and sufficient reason (same as above) and petition and fee
* Deferring Issuance of Patent MPEP 1306.01 – normally available for up to one
month – unless extraordinary circumstances
o to request deferral, applicant needs: petition; fee; showing of good and sufficient
reasons why it’s necessary
o not appropriate unless issue fee is paid
* Withdrawal from Issue MPEP 1308
o Before payment of issue fee:
+ need petition and good and sufficient reason to withdraw application; and fee,
unless reasons for withdrawal is PTO’s fault
+ can file a continuing application and permit parent to become abandoned
+ NO PETITION is required if a RCE is filed before issue fee
o After payment of issue fee:
 + petition and good and sufficient reason; fee, unless PTO’s fault
+ no withdrawal unless: PTO mistake; illegality or inequitable conduct; one or
more unpatentable claims; for interference; OR abandonment to consider IDS in
continuing application

Issuance of Patent

* Payment of Issue Fee

o three months to pay (watch for holidays and weekends) NO EOT
o must pay amount due as of payment date, not the date of notice of allowance
o if not paid or insufficiently paid, abandoned
o issue fee and publication fee and formal drawings can be made via fax
o authorization to charge issue fee to deposit account can only be filed after the
mailing of the NOA. An incorrect fee or fee form w/o payment will be treated as request
to charge deposit account; authorization must be written
o Fee can be paid late if:
+ delay is unavoidable: file petition; fee; issue fee; showing that entire period
was unavoidable; and (for all design apps and other apps filed before 6/8/95) a terminal
disclaimer for period of abandonment
+ delay is unintentional: same, but showing that entire delay was unintentional
* Effect of Issue Date
o patent rights become fully enforceable
o cannot file continuing apps, CPAs or RCEs
o starts two year clock for broadening reissue claims
o starts one year clock for others to copy claims for an interference
o maintenance fee due dates calculated from issue date

Patent Terms and Term Extensions MPEP 1309.01-.02

* Patent Term
o patents filed before 6/8/95; term is greater of 20 years from filing date or 17 years
from issue date
o foreign and provisional priority not counted when determining filing date for
term purposes
o utility and plant file on or after 6/8/95: term begins on issue date and lasts for 20
years from filing date
o Design patents: 14 year term from issue date
o patents resulting from international apps – term ends 20 years from date of filing
international application
o CPAs – term is based on filing date of prior application or, for chain of CPAs,
filing date of application immediately preceding the first CPA in the chain

Patent Term Extensions

* none for apps filed before 6/8/95

* on or after 6/8/95 and before 5/29/2000
 o PTO delay – can be extended 5 years for delays in issuance due to:
+ interference; secrecy; successful appeal
o Premarket Regulatory Review (e.g., FDA review) 5 years + 5 years (pto delay)
* PTA - Original patents issued on apps ACTUALLY filed on or after 5/29/00,
including CPA, continuations (but not design, reissues, or RCEs of apps filed before
5/29/00)
o no limit on total length of adjustment
o applicant has one chance to request reconsideration of initial determination, but
may also obtain judicial review
o PTO delay – day by day patent term adjustments for failure to:
+ initially act on an application within 14 months
+ respond to a reply or appeal by applicant within 4 months
+ act on application with at least one allowable claim after BPAI or court
decision within four months of decision
+ issue application after issue fee is paid and all other req.’s are satisfied
+ issue patent within 3 years of actual filing date of application (unless delay is
caused by applicant requested RCE, interference, secrecy order, or appeal)
o other delays – day by day: interferences; secrecy orders; successful appeals to
BPAI or fed court
o limitations on AIPA term adjustments:
+ where overlapping, no adjustment beyond actual days issuance was delayed
+ adjustment will be reduced by amount of time applicant failed to engage in
reasonable efforts to conclude prosecution; failures include: requesting EOT; failing to
file complete application at date of filing; failure to fulfill national stage req.’s ;
application is not in proper form; filing papers prior to one month before examiner mails
office action – necessitates a supplemental action by PTO; supplemental reply;
amendment after NOA
+ further prosecution via a continuing application eliminates any adjustments
that may have been accumulated in the parent

Ownership and Assignment MPEP 300

* Assignability of patents and apps

o an assignment is considered void unless it is recorded in the POT within 3
months of its date of execution or before subsequent assignment
o each of the joint owners of a patent may exercise the rights of a patent holder
without the consent of and without accounting to other owners
o rights to patent pending may be assigned
* Accessibility of assignment record – all assignment rights are generally open to
public; while ass. rights of pending or abandoned apps are generally not open to public
and may only be viewed upon written consent of the applicant or the assignee
* Recording of assignment documents – each application must meet the following:
o must be an original or certified true copy
o must be in English or with an English translation
o fee
o cover sheet
 * Facsimile submission of assignment documents – PTO generally allows assignments
and other docs affecting title to be submitted via fax; date when fax is complete
o For submission by fax, you must: identify application or patent number; have
cover sheet to record single transaction; AND payment via PTO account
o Docs that may not be submitted via fax: assignments filed concurrently with
newly file apps; docs with two or more cover sheets; requests for corrections to docs
previously recorded; payments with credit card
* Assignment of Division, Continuation, Substitute, CIP and Provisionals
o Division or Continuation Apps – a prior assignment recorded against the original
is applied
o Substitute or CIP – prior assignment is NOT applied
o Provisional – if new application based on provisional contains subject matter not
disclosed in provisional, a new assignment must be submitted
* Employees of PTO – incapable, while they are employees and for one (1) year
thereafter, of applying for a patent and of acquiring any right or interest, either directly or
indirectly, in a patent (other than inheritance or bequest)

Representative of Inventor or Owner MPEP 400

* A pro se applicant is one who chooses to represent himself in filing and prosecution
* Agent or Attorney of Record – one that appears in person or signs a paper before the
PTO on behalf of applicant; the mere filing of papers on behalf of an applicant constitutes
a representation that he or she is authorized to represent the party in whose behalf she
acts.
* An applicant may appoint a representative – by executing a power or attorney
o only individual attorneys may be given a power of attorney
o signature of attorney constitutes a representation to the PTO that she is
authorized to represent the particular party in whose behalf she acts. Attorney/Agent
should specify her registration number with her signature
* All papers submitted must be signed and truthful – violations of this may jeopardize
the validity or enforceability of any patent resulting therefrom
o advising a client of these requirements is not required but recommended
* Conflicting Parties may not have the same attorney – at minimum, you must get
consent
* Correspondence with the PTO
o correspondence address must be submitted; fee address can be the same
o applicant may designate ONE correspondence address
o Customer Number – designed to served the purpose of providing a
correspondence address, fee address, and providing list of practitioners appointed with
power of attorney
+ the last provided customer number determines correspondence address
o correspondence will be directed to the last appointed principal attorney

Changing Representation

* Applicant may designate a new representative at any time – becomes effective when
it is received in the PTO
* The assignee of an entire interest may revoke previous powers and appoint another
attorney
* Papers giving or revoking a power of attorney require signature by all applicants –
unless accompanied by a petition giving sufficient reasons
o each party (each inventor) entitled to prosecute must sign replies
* Withdrawal of Attorney – must be approved by commissioner
o effective when it’s approved rather than when received
o Commissioner usually requires at least 30 days between:
+ approval of withdrawal and the end of a reply period (including EOT, up the
6 months); OR
+ the expiration date of the period which can be obtained by a petition for
extension of time

Situations Where Representation Ceases: Death, Insanity, etc.

* If the inventor is dead, insane or unavailable, an application may be made by another

o if less than all the inventors are available after diligent effort or refuse to execute
the application, the remaining inventors may apply on behalf of the non-signing
inventor(s) – oath must include petition showing last known address of non-signing
inventor
+ temporary absences, such as vacation, unconsciousness, hospitalization, are
NOT appropriate causes for petition
o if no inventors are available or refuse to join, an assignee, or other party having a
proprietary interest may apply for a patent on behalf of and as agent for the inventor(s);
an inventor may subsequently join in the application - petition showing: [applicant is one
to whom the inventor agreed to assign] OR [applicant shows a sufficient propriety
interest and such action is necessary to preserve rights of parties] or [such action is
necessary to prevent irreparable harm and the last known address of the inventors or reps
of deceased inventors]

Secrecy, Access, National Security & Foreign Filing MPEP 100

* Information on the status of an application (status info) is only available to an

inventor, attorney of record, assignee of record, or a person with written authority from
previous; and includes only the following:
o whether the application is pending, abandoned, or patented;
o the application number and filing date; and
o whether one or more apps claims the benefit of the filing date of the application
in question, and, if there are such other apps, the application numbers, filing dates, and
their status
* Right of Public to Inspect Patent and Application Files
o Patent Issued – after a patent has been issued, all patent docs and papers relating
to the case in the patent file are available for inspection by the public; other info open to
the public include:
+ reissue apps; papers relating to reexamination proceedings; and any
interference files, as long as the interference has terminated
o Pending apps incorporated by Reference in a US Patent can be obtained
o Anyone, upon written request and payment of a fee, can view the contents of an
application without notice to the applicant, if:
+ the application has been published;
+ the Commissioner determines it is necessary for the proper conduct of PTO
business;
+ the application falls in one of the categories (patent issued or incorporated by
reference, see above);
+ written authority has been granted by the applicant, assignee, or attorney of
record; OR
+ the application is abandoned, but not if it is in the file jacket of a pending
application under the CPA regulations, and
# it is referred to in a US patent; or
# is referred to in a US application open to public inspection; or
# claims the benefit of the filing date of a US application open to public
inspection; or
# the applicant has authorized the application to be open to public
o any member of public may petition to access a pending or abandoned application
o provisional apps – access will only be given to parties with written authority from
a named inventor, the assignee, or the attorney
o Reissues – all reissues filed after March 1, 1977 are inspectable by public
o All requests for reexaminations are available to public
o Decisions of PTO - will be made public if: commissioner believes the decision
has important precedent value; and none of the involved parties object within 2 months
* Power to Inspect Application – no one but the applicant, her legal rep, assignee, or
attorney of record may have access to any pending application, except reissue apps,
unless written authority is given from one of these parties or the Commissioner
* National Security – must always be filed in home country first
* Secrecy Order – prevents disclosure of the subject matter to anyone without the
express written consent of the Comm.
o remains in effect for one year and can be renewed
* Foreign Filing Licenses – two ways to get permission to file abroad
o file a petition for a foreign filing license; or wait six months after filing an
application
o retroactive license may be pursued if an unlicensed foreign filing has occurred
through error and without deceptive intent; must provide a list of countries it has been
filed in
o a foreign filing license may be revoked by the PTO; foreign filings that occurred
prior to the revocation need not be abandoned

Restriction MPEP 800

* Restriction – the practice of requiring an election between distinct inventions; only

allowed one invention per patent
* Election of species – must elect between two or more patentably distinct forms of a
generic invention claimed in same application (swivel and reclining chairs)
* Restriction Practice Features – always discretionary with the examiner
o lack of restriction is NOT a defect in a patent
o No shifts are allowed from elected to non-elected subject matter; the following
are not considered shifts:
+ where a process is rejected as obvious, the only invention being in the
product made, presenting claims to the product is not a shift
+ if a product is elected, there is no shift where the examiner holds the
invention to be in the process
+ if a genus is allowed, an applicant may prosecute a reasonable number of
additional species thereunder and it’s not a shift
o RCE can’t overcome a restriction requirement
* Criteria for Restriction – examiner must show application claims independent or
distinct inventions AND examining all claimed inventions in a single application would
be a serious burden
o restriction may be required in a divisional application, even though inventions
were grouped together in a requirement in a parent application
* Improper Restrictions: a single claim (including Markush and design); claims clearly
unpatentable over each other; claims differing only in form or scope; means plus function
apparatus claim and a method claim using same language w/o “means for”
* Restriction Procedure – usually done before first search; examiner gives reasons for
restriction (can be by phone)
o applicant has one month to respond (extendable for up to 5 months)
o applicant must elect an invention for examination, with or without traverse; if
election is without traverse, no right to petition later on; applicant must point out reasons
why examiner erred
o if no traversal, examiner withdraws non-elected claims from consideration –
same result if traversal is improper
o only claims elected are examined
o if traversal is proper, examiner will either withdraw the requirement or make it
final
* Applicant disagrees but requirement is made final – applicant may petition and
MUST have: traversed the original requirement; indicated why examiner was wrong; file
petition (no fee) w/in one month after all elected claims are allowed or no later than filing
a notice of appeal from rejected claims (no EOT)
* Applicant agrees with requirement – file a divisional application to the non-elected
inventions. The parent case is NOT prior art against a co-pending divisional, if scope is
similar
* Adding claims after election – if original claims relate only to one invention (no
election necessary) and new claims to a patentably distinct invention are added after
Office Action, the new claims will be deemed withdrawn (constructive election)
* After elected claims are allowed – if applicant traversed, examiner will give one
month (no EOT) to cancel non-elected claims or filed a petition to director;
if applicant did not traverse, examiner can cancel the non-elected claims without
notice and applicant will receive a notice of allowance
* Rejoinder
 o Product and Process claims in same application, product claims elected: if the
product claims are elected and one or more are subsequently allowed, withdrawn process
claims will be rejoined
o Product claims only – if the original application discloses the product and process
for making or using the product, but only claims the product, and a claim is found
allowable, the applicant may present claims directed to the process via amendment
o Product and Process claims in separate apps, not as a result of restriction, no
rejoinder; the second application may be rejected under obvious type double patenting
* For election of species requirement, examiner must show 1) the generic claim
embraces patentably distinct species; or 2) those species exceed a reasonable number
* Types of Related Inventions (for determining if restriction is proper)
o for combination/subcombination claims, restriction is not appropriate when the
invention resides in the subcombination
+ requires both two way distinctness and reasons for insisting on restriction; the
inventions are distinct only if it can be shown that the claimed combination: does not
require the particulars of the subcombination for patentability; and the subcombination
has utility either by itself or in other and different combinations
o A product and process of making the product – can be distinct inventions if
either: the process as claimed is not an obvious process of making the product and can be
used to make other products; or the product as claimed can be made by another, different
process
o A product and process using the product – can be distinct if either: the process of
using as claimed can be practiced with a different product; or the product as claimed can
be used in a materially different process
o Intermediate-Final Product Restrictions – intermediate and final products are
clearly not dependent, so to make a restriction, distinctness must be shown – can be
shown if the intermediate product is useful other than to make the final product.

Double Patenting MPEP 804

* Double Patenting applies to:

o same inventor(s); or
o common owner/assignee, even if different inventors;
o if no common ownership, terminal disclaimer will not apply and 2nd application
will not be allowed to issue
* prevents the same inventor or owner form obtaining a second patent on the same
invention or an obvious variant thereof; only concerns cases of two or more patents or
apps with common inventors or owners
* DP issues can arise between two or more apps, an application and a patent, or in
reexamination or international – if US is involved
* Provisional DP rejections – if the first filed application has not yet issued as a patent
at the time the rejection of claims in the second application occurs
* Two types of DP
o Statutory (Same Invention–Type) DP – inventor is allowed only a single patent
on an invention:
+ same inventor or owner
 + at least one application must be involved
+ identical subject matter
+ analysis is claim by claim
# Solutions - cancel offending claims or amend claims, abandon
application
o Non-Statutory (Obvious-Type) DP – designed to prevent improper time
extensions by patenting something that is not patently distinct form parent
+ same inventor or owner
+ at least one application must be involved
+ “does any claim in the application define an invention that is merely an
obvious variant of an invention claimed in the patent?”
+ “was applicant prevented from presenting the same claims in the issued
patent?”
+ terminal disclaimer may overcome non statutory DP
+ Tests – One Way Obviousness – if the invention described in the
application’s claim is an obvious variant of the invention in the claim of the patent:
enough for a OTDP rejection if:
# the application is the later filed application or both filed on same day; if
the application is the earlier filed application, a one way OTDP is still proper UNLESS:
* administrative delay on part of the PTO caused a delay in prosecution
of the earlier filed application; and
* the applicant could not have filed the conflicting claims in a single
application
+ Two Way Obviousness – if applicant could not have filed the claims at issue
in a single application AND there is administrative delay, AND the application on which
the patent was granted is the later filed application, then a two-way obviousness
determination is necessary for rejection. (In other words, the claim in the 2nd application
can only be rejected for OTDP if it is an obvious variant of the claim in the first patent
AND if the claim in the first patent would be an obvious variant of the claim in the
second patent.)
+ Solutions – try to overcome by arguing patentable distinctness; or file a
terminal disclaimer in the later application:
* disclaim entire terminal term of all claims in the second patent beyond
normal expiration of first;
* cannot disclaim terminal term of specific claims;
* must include statement that common ownership will be maintained;
* fee
* Disclaimer will not work for Statutory DP
* no term extension for later patent past date of TD
* not an admission of the correctness of the rejection
* put all claims into one application if possible
* Domination Distinguished: when a broad claim in one patent or application
completely encompasses a narrower claim in another patent or application – does not
imply DP
* Double Patenting and Restriction – no DP rejection may be made in a divisional
application over a parent patent (or application) where the examiner imposed a restriction
and scope is same as it was
o this prohibition is not available if: applicant voluntarily files 2 or more cases w/o
an examiner imposed restriction requirement; claims of 2nd are drawn to the same
invention as 1st; restriction requirement was only made in a international application
before it entered the national stage in the US; or the requirement for restriction is
withdrawn before the patent issues
* Double Patenting between utility patents and design/plant patents – allowed where
appropriate; usually a two way analysis

Correction of Patents MPEP 1400 and 2200

Certificates of Correction

* mechanism to correct minor, non-substantive inconsistencies between application as

prosecuted and the patent ultimately issued; clerical corrections

* cannot be used to correct patent to add new matter or requires substantive

reexamination
* Who can request a CoC?
o If mistake of PTO: Commissioner acting sua sponte – on his own accord;
Commissioner acting on information provided by 3rd party; or the patentee or assignee –
NO FEE required
o If mistake was applicant’s fault: the patentee or assignee may request so long as
error was made in good faith; FEE required
o 3rd Party – PTO has no duty to act upon or respond to 3rd party request for a
CoC; patentee is given opportunity to respond; 3rd party papers will not be entered into
file wrapper
* What type of Errors are Correctable via a CoC?
o Minor Errors – grammatical and typos in spec or drawings; if PTO’s mistake,
they have discretion not to issue CoC and instead, may place request in file for public
notice purposes
o Errors that Affect Understanding or Interpretation – misspelled words, error in
name, missing text, wrong formula or equation
o Serious Errors (rare) – PTO may issue a corrected patent
* CoC Procedure – Applicant’s or PTO’s mistake
o request made to CoC branch of PTO; identify patent number and issue date;
identify how errors occurred; include fee if not PTO’s fault (no small entity discount);
identify action requested (CoC, corrected patent, letter in file); use of PTO form is
encouraged
* Special CoC Procedures
o Rule 324 Petition to Correct Inventorship Errors: requires statement from each
inventor being added that error occurred without deceptive intent on their part; statement
from each inventor named (including those being deleted) agreeing to change; statement
by all assignees agreeing to change; and fee
o court order can also change Inventorship
o Assignee Name Correction: Rule 183 Petition with fee; statement that failure to
include was inadvertent; request that R3.81(a) be waived; and copy of Notice of
Recordation of Assignment
o Priority-Related Errors – CoC is proper to correct, only if:
+ domestic or foreign priority properly claimed but not printed on face of
patent;
+ a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 may be
requested and issued in order to perfect a claim for foreign priority benefit in a patented
continuing application if the requirements of 35 U.S.C. 119(a)-(d) or (f) had been
satisfied in the parent application prior to issuance of the patent and the requirements of
37 CFR 1.55(a) are met; if application on of after 11/29/00, patentee must also file a
petition for an unintentionally delayed foreign priority claim under 37 CFR 1.55(c)
+ 119(e)/120 domestic priority not claimed in application filed before
11/29/00 , but co-pending application to be added by CoC is identified in application
papers; or
+ 120 domestic priority not claimed in application filed on or after 11/29/00,
but co-pending application to be added by CoC is identified in application papers
(requires R78(a)(3) – unintentional delay – and surcharge
* Legal Effect of a CoC – Retroactive – becomes part of patent, and dates back to
original issue date

Disclaimers

* What is a disclaimer?
o mechanism for any (full or partial) owner of a patent to disclaim “too much”
patent protection originally received
o Two Types:
+ Statutory – patentee give up subject matter by disclaiming one or more
claims of patent
+ Terminal – patentee gives up a terminal portion of the patent’s term
* Why us a disclaimer?
o patentee discovers one or more claims are invalid (e.g., too broad) or defective
and desires to delete such claims form the issued patent
o must be without deceptive intent (i.e., discovery must be subsequent to patent’s
issuance)
o patentee desires to dedicated one or more complete claims to the public;
o disclaimer is irrevocable and binding on the patentee/assignee’s successors in
interest
o each joint inventor can only disclaim his percentage of the patent
* Patent Disclaimer Procedure
o Addressed to CoC Branch of PTO
o Identify Patent Number
o Identify claims or term to be disclaimed
o Identify disclaimant and their ownership interest in the patent
o Include R20(d) Fee – small entity discount applies
o Signature by patentee/assignee or attorney
o Disclaimer is placed in file, attached to patent, and listed in OG
o Terminal Disclaimer filed in an application is revocable until patent issues
 o Terminal Disclaimer filed in an application does not carry over to continuations
(unless it says so), but it does carry over to CPAs and RCEs

Reissue

* What is Reissue?
o mechanism for correction of scope and contents of patent which requires
substantive examination
o Why? “The specification and claims of a patent, particularly if the invention be
at all complicated, constitute one of the most difficult legal instruments to draw with
accuracy.”
o Offer to surrender original patent, and then you file an amended application for
the unexpired term of the original patent.
* Grounds for Reissue
o In order to broaden claims, must file for reissue within two years from the issue
date of original patent by inventor
o Cannot introduce any new matter
o error is specification or claims, which occurred without deceptive intent, that
renders patent wholly or partially inoperative or invalid
o Commissioner may issue one or more patents based on reissue application (can
file RCE, continuation and divisional apps off a reissue, but no CIP)
* What Errors Can Reissue Correct?
o any inaccuracy or error which could have been corrected by amendment during
prosecution or by filing a continuation in the original application
o can also correct errors normally done by CoC or Disclaimer only if incidental to
Reissue process
o can conform drawings to spec and vice versa – this is not new matter
o can cure inadvertent failure to claim a statutory class of invention
o can cure errors in Inventorship not curable by CoC (e.g., lack of consent or all
parties do not agree)
o Reissue is also available to correct the “error” in failing to take any steps to
obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the original patent
was granted. In a situation where it is necessary to submit for the first time both the claim
for priority and the certified copy of the priority document in the reissue application and
the patent to be reissued resulted from a utility or plant application filed on or after
November 29, 2000, the reissue applicant will have to file a petition for an
unintentionally delayed priority claim under 37 CFR 1.55(c) in addition to filing a reissue
application
o can cure errors in priority not curable by CoC, but if patent issued from an
application filed on or after 11/29/00:
+ cannot cure failure to claim 119(e) priority (to provisional); and
+ to cure foreign or 120 domestic priority in non-design patent requires a
R78(a)(3) petition and the R17(t) surcharge
o cannot cure R56 or 112P1 (best mode) violations, or totally defective oath
* Types of Reissue
o Broadening – when patentee discovers claims are too narrow
 + new or different claims are sought that read on subject matter not read on by
original claims;
+ new claims directed to different statutory class of invention;
+ even if some elements of a claim are narrowed, as long as any element is
enlarged
+ must be disclosed and enabled in original application spec;
+ two year time limit to file reissue (not to present broader claims)
+ cannot be filed by assignee
# Recapture Doctrine – applicant cannot broaden claims in an attempt to
reclaim subject matter given up by a narrowing amendment, argument or cancellation in
original application
o Narrowing – when patentee becomes aware of prior art
+ seeks to amend claims
+ may act like a disclaimer if any claims are eventually cancelled
o Same Scope
+ seeking to add claims of same scope is improper
+ may seek, however, to correct indefiniteness errors
o Interference
+ patentee may seek to present new claims to provoke an interference (copying
claims from another issued patent)
* Reissue Application Filing Mechanics
o a copy of the patent spec (double column, single-sided sheet format), including
the claims, and a clean copy of the drawings
o a copy of any disclaimers, CoC, or reexamination certificates issued in the patent,
and disclose any other proceedings in which patent is or was involved
o may file an amendment either on a separate sheet of paper or by “cutting and
pasting” copy of patent
+ All [deletions] and additions in spec must be noted
+ All deletions and additions in text of amended claims must be noted;
statement of which claims are cancelled, and separate sheet with status of all claims
+ Amendments to drawings must be shown on separate sheet and noted in red
with “amended” label. Added drawings must have the “new” label. Deleted drawings
must be completely enclosed in brackets and “cancelled.”
o must include statement of offer to surrender original patent; the actual ribbon
original; or state that it is “lost or inaccessible,” at filing
o Oath stating: applicant believes patent is wholly or partially inoperative or invalid
by reason of claiming more or less, or defective spec or drawings; error arose w/o
deceptive intent; specifying at least one error; all info required by R63; AND all
assignees consent or statement that there’s no assignee
o must be signed by all assignees, if any unless seeking to enlarge the scope of
claims in which all inventors must sign as well
o small entity discounts apply
* Prosecution of a Reissue Application
o Reissue application prosecution is identical to examination of “normal” apps,
with one exception: file is open to public for inspection and comment
o upon filing reissue application, notice is published in OG, file is publicly
accessible and 3rd parties may file R291 protest (2 months from OG)
o filing a reissue application: reopens prosecution as to all claims; allows prior art
of record to be reapplied; and there is no presumption of validity
o reissue apps are granted special status
o duty of disclosure applies
* Effects of a Reissue Patent
o Filing Date: given effective filing date of original application

# Result: after reissue application process, patentee may end up with

original, broadened, narrowed, or no patent at all
# Issuance: when reissue patent issues, original patent is surrendered
# Expiration: expires when original patent would have issued
# Maintenance: fees based on original issue date and payable on same
schedule
# Infringement: no effect for reissue patent claims that are common, or
substantially identical, to original patent claims
# Intervening Rights For New Claims:

+ between issue date of original patent and reissue patent, there is an absolute
continued right to use or sell products manufactured before date of reissue and covered
by new claims for those who actually relied on the original patent
+ court may fashion equitable remedy for products manufactured after date of
reissue if substantial preparation was made prior to reissue grant

Citation of Prior Art

* Overview of Prior Art Citation

# What? Presentation of prior art patents and/or printed pubs to the PTO for
placement in a patent’s file
# Why? To ensure that art will be considered in subsequent reissue or
reexamination proceedings
# Who? Any person, including the patent owner, but not examiners
# When? May cite prior art that has a bearing on the patentability of any
claim of a particular patent at any time during period of enforceability of patent
(expiration date plus 6 years)
# Restrictions? Citations of prior art will not be entered into a patent’s file
during a pending reexam, unless submitted by:

+ patent owner;
+ another reexamination requester; or
+ as part of a 3rd party requestor’s reply
* Filing Procedure
o Must include:
+ cover sheet identifying patent, issue date and patentee;
+ list of pertinent prior art (not already of record in patent file);
 + explanation of pertinence of prior art cited, including application to at least
one claim of the patent;
+ If by 3rd party – Certificate of Service or duplicate copy of papers
+ NO FEE
+ “Poor Man’s Reexam”
o May also include:
+ copy of each piece of prior art (English translations if necessary)
+ affidavits or declarations relating to prior art documents (e.g., explaining
effective date of art)
+ If by patent owner – explanation of how claims of patent differ from cited
prior art
* PTO Handling of Prior Art Citations
o forwarded to relevant Tech. Center
o if citation is proper and was filed by patent owner, it is entered into file
o if citation if proper and was filed by 3rd party, it is entered into file, and notice
and duplicate copy of papers (if filed) sent to patent owner
o if citation is proper and was filed by 3rd party, but patent is under reexam, it is
put in storage until reexam is terminated, notice sent to 3rd party (if known), and notice
and duplicate copy of papers sent to patent owner
o if citation is not proper and was filed by patent owner, it is returned to owner
o if citation is not proper and was filed by 3rd party, notice is sent to 3rd party,
notice given to patent owner, duplicate copy of papers sent to owner, and original copy
returned to 3rd party (if known, else to owner)

Ex Parte Reexamination of Patents

* What is a Reexamination?
o mechanism for correction of scope and contents of patent which requires reexam
because there exists a substantial new question as to the patentability of one or more
claims therein based on other patents or printed pubs
* Who can request an ex parte reexam?
o Commissioner on his own accord
o Patentee with fee
o Any interested 3rd party (corp. or individual) with fee
* Mechanics of an ex parte reexam request
o must be in writing, giving a statement pointing out each substantial new question
of patentability:
+ proper basis – patent or printed pub serving as a basis for 102a,b,e,f,g,103
and double patenting; and admissions by patentee, but only in combination with patents
or printed pubs; intervening prior art if claim not entitled to earlier filing date via 120
+ improper basis – 112, fraud, or on-sale or public use bars under 102(b)
o Fee: no small entity discount
o Submit: copy of patent with any disclaimers, CoC, or reexam certificates issued
in the patent; and copy of each patent and printed pub relying upon (and English
translation)
o Must identify claims for which reexamination is sought and the pertinence of
prior art being submitted to each such claim
o If by 3rd party, certificate of service on patentee or duplicate copy of papers if
service was not possible; and preferably copy of power of attorney if filed by
attorney/agent for 3rd party
o If by patentee, may also file proposed amendment; request will be considered on
claims of issued patent; prosecution will begin, if reexam is granted, based on amended
claims
o Timing – must be filed within period of enforceability of patent including statute
of limitation for bringing an infringement case (+6 years)
o PTO will give requester notice and time (typically 1 month) to respond if request
contains any defects
* Ex Parte Reexamination Procedure
o request is announced in OG
o Assigned to same Art Unit (but usually not same examiner)
o PTO must decide whether to grant reexam within 3 months of request
o If Denied (no substantial new question of patentability) then:
+ order denying reexam is sent to requestor and patentee
+ requester may petition for reconsideration once within one month of initial
decision
+ initial decision and decision on petition is final and nonappealable
+ requester receives partial refund
o If Granted:
+ examiner will issue an order granting reexamination to requestor and patentee
that states each substantial new question of patentability with respect to specific claims
and prior art; and her position with respect to each issue raised by requestor in the proper
form
+ examiner’s position may be same or different from requestor’s
o Patentee may file R181 Petition to vacate reexam order if they believe grant was
improper
o During reexam, all communications by patentee or 3rd party requestor to the
PTO must be served on the other party
o During reexam, file is open to public for inspection
* Owner’s Statement
o patentee may file owner’s statement within 2 months of, but not before, order
granting reexamination
o EOT is typically one month and are only available for good cause (R550c)
o owner’s statement must particularly point out why claims are patentable over
prior art, and may include an amendment
* Requestor’s Reply to Owner’s Statement
o If owner’s statement is filed, 3rd party requestor may file a reply brief within 2
months
o EOT is not available for filing reply
o reply is limited to issues raised in owner’s statement
o reply may include additional prior art and printed pubs (see previous)
 o reply is the requestor’s last chance to participate in ex parte reexam
* Special Characteristics of Ex Parte Reexamination Prosecution
o reexam proceedings are conducted with special dispatch
o all claims are examined for 102 and 103 issues without deference
o only new or amended claims are also examined for 112 issues
o duty of disclosure applies
o interviews are only allowed after first OA, and patent owner must file statement
of reasons presented during interview in a separate paper or in next reply to OA
o correction of inventorship is allowed
o reexaminations are never abandoned
o no filing of continuation apps is allowed
o only patent owner can appeal to the Board (not 3rd party)
o appeal process is the same as ex parte prosecution except for EOT (on or after
11/29/99, must be final rejection)
* Ex Parte Reexamination Office Actions
o First OA should be completed within one month and mailed within 6 weeks of
filing/due date of: owner’s statement if no 3rd party requestor; or reply if 3rd party
requestor
o First OA should address all claims; not include any restriction requirements; and
only raise 112 issues as to new or amended claims
o Issues beyond scope of reexam should be noted by examiner, but not addressed,
with suggestion for reissue
o Reply to first OA is typically due in 2 months (1 month if reexam ordered by
court or stayed) with only good cause EOT (must be filed before due)
o Reply is same as ex parte prosecution, but amendments must be in [ Rule 530 d-j
format]
o Failure to file reply to an office action results in termination of reexam and
issuance of reexam certificate in accordance with last office action; rule 137 petition
(unintentional or unavoidable) is the only way to revive
o Second OA is typically final
* Conclusion of Ex Parte Reexamination
o if examiner issues a final rejection, 2 month period for patent owner to reply or
appeal
o if first response to a final rejection is a reply, patent owner get automatic one
month EOT
o if no final rejection or appeal, examiner will issue a notice of intent to issue a
reexam certificate (NIRC) which states reasons for allowance
o no issue fee is required after ex parte reexam
o reexam certificate is published in OG
o intervening rights (as in reissue) exist
* Multiple Reexamination Requests
o if subsequent request involves the same prior art cited in first reexam, it is
automatically granted
o if subsequent request involves different prior art than that cited in first reexam, a
decision whether to grant is made on its own merits
o if there is more than a three month difference between the date of a second
request and the expected issue date of a reexam certificate in the first proceeding:
+ group director will merge first and subsequent reexams and suspend issuance
of reexam certificate from first proceeding
+ when merged, patent owner must file original, identical papers in both files;
same claims must be pending in both files; and examiner will issue identical OA in both
files; but multiple reexam certificates will issue
o if date of second request is within three months of expected issue date of reexam
certificate in first proceeding:
+ group director will not normally merge proceedings, but any subsequent
request will be decided with respect to new claims issuing from first reexam
* Ex Parte Reexaminations in Conjunction with Other Proceedings
o patent owner must disclose any other proceedings to examiner (e.g., litigation,
reissue and interference)
o Reexamination – Interference: reexam is typically not stayed for resolution of
interference
o Reexamination – Reissue: typically two proceedings are merged, reissue rules
apply and reissue patent also serves as a reexam certificate
o Reexamination – Litigation: If litigation is stayed pending reexam or if court
orders reexam, then certain time periods are shortened in reexam proceedings; final
decision by court that claims are invalid or unenforceable is binding on PTO

Inter Partes Reexamination of Patents

* What is Different from Ex Parte Reexamination?

o applicable only to patents issuing from apps filed on or after 11/29/99
o if request is granted, first OA is mailed with the order granting request
o if request is denied, partial refund
o no interviews are permitted during inter partes reexam
o 3rd party requestor may respond to patent owner’s reply to EACH OA
o 3rd party requestor may appeal to the Board or participate in patent owner’s
appeal to Board
o a party who has previously requested an inter partes reexam in which a final
decision favorable to the patentability of a claim is estopped from later Court action on
the basis of issues raised or issues that could have been raised in the inter partes reexam
* Estoppel: Who May NOT Request Inter Partes Reexamination?
o the patent owner
o a party who previously lost in a court action on a validity challenge to the patent
on the basis of issues raised or issues that could have been raised
o a party who has previously requested an inter partes reexam which has been
granted and is still pending
o a party who has previously requested an inter partes reexam in which a final
decision favorable to the patentability of a claim was made on the basis of issues raised
(or could have been) on previous request
* Request for, and Service of, Inter Partes Reexamination
 o essentially the same as ex parte reexam, except:
+ includes rule 20c2 fee of $8,800 – no small entity discount
+ certification that R907 estoppel does not apply
+ must identify the real party who is making request
* 3rd Party Requestor Participation in Inter Partes Reexamination
o 3rd party requestor may file written comments, once, to patent owner’s reply to
each OA
o must be filed within 30 days of receiving service of patent owner’s reply to OA
o no EOT
o written comment (50 max) must be limited to issues raised in OA & reply
o citations of additional prior art are limited to those necessary to respond to patent
owner’s reply and issues raised by examiner in office action
* Appeal in Inter Partes Reexamination
o examiner will issue a notice of right to appeal which is a final action setting forth
final grounds for rejection and/or patentability for each claim
o no amendments are allowed after the issuance of notice of right to appeal
o parties may then appeal within 1 month of date of notice of right to appeal
o parties may stipulate and request issuance of notice of right to appeal anytime
after patent owner’s reply to initial OA
o if no party appeals, reexam is terminated and inter partes reexam certificate will
issue
o if a party appeals by filing notice of appeal, all other parties may file, within 14
days, a notice of cross appeal
o Nine-Step procedure (time limits are not extendable)
+ appeal brief – due two months from notice of appeal
+ respondent’s brief – due one month from service of appeal brief
+ examiner’s answer: no new grounds for rejection (or reopen pros)
+ rebuttal brief – due one month from examiner’s answer
+ request for oral hearing – due 2 months from examiner’s answer
+ oral argument – 20 mins for examiner and 30 mins for each party
+ decision by board
+ petition for rehearing due one month from initial decision
+ appeal to federal circuit by patent owner
* Inter Partes Reexaminations in Conjunction with Other Proceedings
o like ex parte reexam, patent owner must disclose any other proceedings to
examiner
o Multiple Reexams: may be merged or one proceeding suspended until the other
concludes; if inter partes merged with ex parte reexam, inter partes rules govern, but ex
parte requestor get no additional rights, and one reexam certificate will issue
o Reexamination – Interference: Commissioner is empowered to suspend one
proceeding until the other is concluded
o Reexamination – Reissue: may be merged or one proceeding suspended until the
other concluded.; if merged with reissue, inter partes rules govern, but requestor can
participate; identical papers filed and same claims must be pending in both files, and
reissue patent also serves as the reexam certificate
o Reexamination – Litigation: Commissioner has discretion whether to suspend in
view of litigation; patent owner may seek stay of court action until reexam is terminated

Maintenance Fees MPEP §2500

* Must identify Patent Number AND Patent Application Number, if only identifies
patent number, fee may be returned
* Reminders are sent to FEE address, if any, otherwise to correspondence address
* Reinstatement
o If unintentional; can pay within 24 after grace period with petition (SE fee) and
showing that entire delay was unintentional; plus surcharge fee (No SE)
o If unavoidable; can pay any time after grace period with petition and showing;
plus fee
* Intervening rights from after expiration of patent until reinstatement of patent
* Does not apply to plant and design patents
* Can pay 6 months early or 6 months late; late payment = expiration of patent
* Can be paid via fax, mail, or Internet
* Anyone can pay

Appeal MPEP §1200

Who and When

* You can APPEAL matters dealing with SUBSTANTIVE issues (rejections); actions
on the merits – made to the Board of Patent Appeals & Interferences
* You can PETITION matters dealing with objections to FORMAL/PROCEDURAL
matters – made to the Commissioner
* Can appeal when claims have been twice or finally (ex parte) rejected
* Patentee whose claim has been twice or finally (ex parte) rejected in a reexamination
filed before Nov. 29, 1999; only finally rejected after said date
* Non-entered claims and non-entered amendments are NOT subject to appeal
* Filing an RCE (whether proper or improper) will result in cancellation of appeal

Appeal Process

* File notice of appeal within 3 months of final (second) rejection on merits; EOT
available for up to 3 more months

Amendments after filing notice

* Must be made before jurisdiction passes to the Board

* Allowed if amendment adopts a suggestion made, or if it removes an issue
* Not allowed if raises new issues or increases total number of claims
* Examiner may reopen prosecution to issue a new rejection (from the amendment or
based on an IDS filed by applicant)

Timing
 * Must be filed within the GREATER of: 2 months of PTO receipt of notice; or time
left to reply to the action being appealed
* EOT for up to 5 months
* Failure to file brief dismisses appeal and abandons application if no allowed claims

Appeal Brief Specifics

* Content requirements spelled out in MPEP §1206

* Must identify claims being appealed
* New arguments are allowed but new evidence is not allowed
* Must traverse all grounds of rejection
* All claims of a group must stand or fall together, unless stated otherwise
* If notice of defects issued by PTO, must reply within the greater of: 1 month; 2
months of the PTO receipt of Notice; time left to reply to action being appealed

Appeal Conference and Examiner’s Answer

* Examiner must answer within 2 months from receipt of appeal brief

* MPEP §1208 recites 11 content requirements
* No new ground of rejection
* If new grounds, examiner must reopen prosecution; like a regular office action
* If an examiner’s answer is believed to contain a new interpretation or application of
the existing patent law, the examiner’s answer, application file, and an explanatory
memorandum should be forwarded to the TC Director for consideration. If approved by
the TC Director, the examiner’s answer should be forwarded to the Office of the Deputy
Commissioner
* for Patent Examination Policy for final approval

Timing of Filing a Reply Brief

* It’s optional, and must be filed within 2 months of examiner’s answer

* Good cause EOT

Timing of Filing a Request for Oral Hearing

* Optional; must be filed within 2 months of examiner’s answer

* Good cause EOT

Decision by the Board

* Closes prosecution for rejected claims

* Can enter a new ground of rejection for any claim

Remand by the Board to the Examiner

 * For a fuller description
* Explanation of references
* Selection of preferred or best ground
* Further search if most pertinent art has not been found
* Consideration of an amendment, affidavit/declaration
* Supplemental Examiner’s answer

Reconsideration and Court Appeal

* Can request rehearing on paper within 2 months from Boards decision

* Good cause EOT available
* Court action must start within 2 months (at least 60 days) from decision

Examiner sustained in whole or part – No Claims Stand Allowed

* Claims allowable except for dependency from a rejected claim are treated as if they
are rejected
* Board reverses rejection of dependent claims-Examiner’s amendment may be used to
rewrite allowable claim into independent form or 1-month time limit for appellant to
rewrite claims

Examiner sustained in whole or part – No Claims Stand Allowed

* Cancel claims depending from reject base claim and allow others.

Protests MPEP §1900 – very unusual

* Made by member of public who thinks granting patent would be improper

* May be filed against a pending application or reissue
* Must specifically identify application # or serial #; contain a listing a evidence;
explain relevance of each evidence; copy or each evidence (English); Certificate of
service or duplicate copies to PTO

Timing

* Must be prior to first of either: mailing of Notice of Allowance; or 18 month

publication date
* Within 2 months of announcement of filing of reissue application in OG; EOT
available
* If after final Notice of Allowance or publication, service to applicant is all that can
be done; PTO discards it

Protestor’s Rights

* One chance to submit protest

* Can NOT participate in prosecution process after filing protest
 * Cannot file additional papers unless they could not have been filed earlier
* Applicant typically has 1 month to reply if requested by examiner

Petitions

* MPEP §1002.02 – which PTO official has authority

* Must be filed within 2 months in ex parte proceeding (regular, reexamination,
reissue); does not stay time to reply to outstanding rejection
* §1.181 – situations in which a statute indicated that matter is handled by the
Commissioner and provided for in the rules
* §1.182 – situations not specifically provided for in the rules – decided on merits
* §1.183 – waiver of a rule not required by a statute in an extraordinary situation where
justice requires

Document Disclosure Program – Miscellaneous MPEP §1700

* Retained for 2 years by PTO unless a later application is filed that refers to it
* $10 fee
* No priority, not a provisional

Interferences MPEP §2300

* Claims need not be identical, but they must have the same subject matter
* Inter partes proceeding between 2 patent apps or 1 patent and 1 application
* §1.131 CAN NOT be used to “swear behind” a patent CLAIMING the same
invention; but it CAN be used to swear behind a patent DISCLOSING same invention
* Senior party has earliest effective filing date and is Defendant
* If party was first to conceive and they were DILIGENT from before other party’s
conception up until their later filing date, they win race
* Burdens of Proof; application and application – junior party must prove by clear and
convincing; application and patent – junior party must prove by preponderance of
evidence (easier)

Provoking an Interference

* Applicant may provoke by: proposing a count (mock claim); presenting or

identifying a claim (in an application) corresponding to count; identifying other pending
application (issued patent); and explain why interference should be declared
* Applicant can copy a claim from another pending application or issued patent
verbatim at the suggestion of examiner
* Timing – provoking an interference with an issued patent must normally be done
LESS THAN ONE YEAR from issue date; good faith extension of time
* if PUBLISHED and applicant’s filing date was after publication, the copying must be
done less than one year from publication date
* When two applications are involved, Examiner will not suggest copying if more than
3 months difference in filing dates for simple matter; and 6 months if not simple matter
 * Once interference is filed, each party has access to opponent’s file
* If interfering apps or application-patent have the same inventive entity or common
assignee, then double patenting rejection is proper
* Failure to comply with suggestion (usually non-extendable 1 month) acts as a
disclaimer to uncopied subject matter
* Declarations must be filed only with an issued patent/pending application
interference
* Parties may voluntarily settle before interference terminates by filing written
agreement with PTO

Matters Decided by Various PTO Officials – MPEP 1002.02

Design Patents (p.43 Receipt and handling of mail and papers)

* Design must be reproducible; 14 year term from date of patent grant; one claim; no
claim to provisionals; must be novel and nonobviousness; computer generated icons can
receive design patents; no offensive subject matter; 112 applies; © symbol can
accompany design with a waiver to PTO
* “The ornamental design for (the article) as shown.”
* No Maintenance Fees
* No publication
* 6 months to claim priority to foreign apps
* No RCE; no reissue
* Drawings, drawing descriptions, single claim. Brief narrative is optional.
* Not published
* May have expedited examination if filed with fee, compliant drawings, statement that
a pre-examination search was conducted, an IDS, and in condition for examination

Provisional Applications

* No oath or declaration is filed

* No publication
* No RCE
* Does not have to be in English
* No IDS’s

Plant Patents

* must be asexually reproduced; bacteria is not a plant; only one claim allowed; two
color (if necessary) copies of drawings; claim the plant, not the fruit of the plant; no
advertising allowed
* No Maintenance Fees

Small Entity
 * 50% Discounts for:
o basic filing fees; fee for extra claims; maintenance fees; disclaimers; extension of
time; reissue apps
* No Discounts for:
o Petitions (some); reexams; changes affecting tile, document and recording fees

Facsimile

* Can pay: maintenance fees, most correspondence after initial filing of an application
* Can send copies of oath/declaration
* Can file CPA
* can be used to pay issue fee and publication fee
* can be used for assignment and other docs affecting title
* can NOT be used to: file PCT apps, enter the national stage, elect states, basic
national fee nor copy of application, drawings submitted under 1.81, 1.83 through 1.85,
request for reexamination, correspondence in applications under secrecy order, most
appeal correspondence (except for ex parte appeals), most correspondence in interference
proceedings