Key Words Glossary Contents

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1 Key Words Glossary Contents Note: This keyword glossary is meant to be a comprehensive guide to all of the terms of art that you will need in going through the course. But, if you run across a term or phrase you re not familiar with, and it s not defined here, feel free to check the Patent Office s online glossary at Access... 3 Allowance... 3 Amendment... 4 Anticipation (102)... 5 Appeal... 6 Application... 7 Best Mode... 8 Certificate of Mailing/Express Mail... 9 Claims Correction of Inventorship Correction of Patents after Issuance Design Patents Disclaimer Double Patenting Duty of Disclosure/IDS Ethics Extensions of Time Filing Date Final Rejections Foreign Filing Licenses Foreign Priority In This Country Incomplete Application Incorporation by Reference... 23

2 Interference Interviews Inventorship Maintenance Fees New Matter Oath/Declaration Obviousness Ownership Contrasted with Inventorship Patent Patent Cooperation Treaty Petitions to Make Special Plant Patents Prima Facie Showing of Obviousness Protest Provisional Application Record Reduction to Practice Reissue Rejection/Objection Reply Brief Representation Restriction Revival Secondary Consideration Serial Number/Filing Receipt Small Entity/Large Entity Statutory Inventions Registration (SIR) Substitute/Continuing Swearing Back Withdrawal This keyword glossary is meant to be a comprehensive guide to all of the terms of art that you will need in going through the course. But, if you run across a term or phrase you re not familiar with, and it s not defined here, feel free to check the Patent Office s online glossary at

3 ACCESS The general rule is that unpublished applications are maintained in confidence. Unrestricted access to unpublished pending applications is limited to the applicant, the attorney of record, the assignee of record (and not the licensee), and anyone who has written authorization from one of these. After a patent has issued, or an application has published, anyone can inspect and copy it. However, access to unpublished pending and unpublished abandoned applications is for the most part limited to applications that are referred to in the text of an issued U.S. patent, or that are claimed for domestic priority, and thus access is necessary to determine the status of that issued patent. The application files for reissues and reexaminations are public, as are the file of an interference between a patent and an application, after the interference has ended. The assignment records for applications are subject to the same access rules as the applications assigned. MPEP cites Rule 1.11 and The Patent Office emphasizes the importance of confidentiality, and quite naturally this leads to a question on most exams. ALLOWANCE Once an Examiner is satisfied that the statutory and Patent Office requirements have been satisfied the applicant is sent a Notice of Allowance, which sets a three-month period for payment of the Issue Fee. The three-month period for payment cannot be extended but the Issue Fee can be accepted late Rule if the failure to pay timely was unintentional or unavoidable. Corrected drawings are typically due and required at the same time the Issue Fee is due. The Examiner has the power at the time of allowance to cancel claims to nonelected inventions, claims lost in interference, and rejected claims following an appeal. The Examiner can, if he or she wishes, provide written Reasons for Allowance. The applicant may respond to those reasons, but there is no requirement to do so. Applications may be withdrawn from issue prior to payment of the Issue Fee by petition of the applicant upon a showing of good and sufficient reasons and, of course, the fee. Alternatively a continuing application can be filed before the Issue Fee is due and the parent application abandoned either expressly or by failure to pay the Issue Fee. 3

4 After an Issue Fee is paid, applications may be withdrawn by the Patent Office for: 1. a mistake on the part of the office; 2. a violation of the duty to disclose; 3. unpatentability of one or more claims; 4. interference; or by the applicant for: 1. abandonment to consider an IDS in a continuing application, or 2. unpatentability of a claim. A petition to defer issuance will not be accepted until after the Issue Fee has been paid. If submitted after that time, the issue date will be deferred up to one month for extraordinary circumstances, which do not include time for filing in foreign countries, time for preparing a CIP, or time to negotiate licenses. Requests for simultaneous issue of related applications, which are both allowed, are normally granted. MPEP cite-1300; Rule EXAMPLE: After the Notice of Allowance has been received and the Issue Fee paid, prior art comes to light that could not have been discovered earlier and that the applicant wishes the Examiner to consider. An IDS will not now be considered in this application. Instead, a petition to withdraw the application from issue and abandon it in favor of a continuing application should be filed and an IDS filed in the continuing application. AMENDMENT An amendment is any change that is made in the specification, claims, or drawings after, or at the same time, the application is filed. A Preliminary Amendment is one made after or at the time of filing, but before an action is issued. Amendments can be made in response to an Official Action or, if no changes are made in the specification, claims, or drawings, the response to an Action may be a Request for Reconsideration. Amendments and briefs cannot be amended, but any portion of an application which has been changed by an amendment can be changed by a subsequent amendment. An application cannot be amended before it is filed or after it is abandoned, but a Preliminary Amendment may be filed with an application. A petition to revive an abandoned application that had an outstanding Official Action pending at the time it was abandoned must be accompanied by either an amendment or a request for reconsideration, or a filing of a continuation under Rule 1.53(b) or 1.53(d) (if eligible) or the filing of an RCE (37 CFR 1.114). 4

5 NOTE: Oaths must be supplemented or replaced; they cannot be amended. Amendments after a Final Rejection may be entered, which means that the Patent Office henceforth will act on the basis that the amendments are part of the application, or refused entry, in which instance the Patent Office will proceed to appeal on the assumption that they never existed. Amendments sought after Final Rejection and after allowance are subject to special rules. Amendment format is set forth in 37 CFR MPEP cite-714 Questions involving an amendment are a certainty. In particular, you must know the rules for amending claims and the rules for amendment after final rejection, after allowance, and on appeal. Knowing that a Petition to Revive an unintentionally or unavoidably abandoned application must be accompanied by a response to any action which was outstanding at the time of abandonment, or a continuation, will get you an easy two points. Knowing an intentionally abandoned application cannot be revived is likely worth two more. ANTICIPATION (102) Pre- and Post- America Invents Act ( AIA ) 35 USC 102 sets forth some circumstances where a patent cannot be obtained. Those circumstances are called anticipation and include events and acts like: 1. a prior publication; 2. a prior patent; 3. an abandonment of the invention; 4. a prior sale or offer for sale; 5. a prior use; 6. prior public and general knowledge; or 7. a prior invention. These circumstances are collectively referred to as prior art. Under Pre-AIA, some of these prior acts must have occurred before the invention was made (102(a), 102(e), 102(f), and 102(g)); others count as prior art if they took place before the application was filed (102(d)) or more than a year before the application was filed (102(b)). Under Post-AIA, a similar, less complex analysis is made, but the key focus is on the filing date only! Much simpler to understand and apply. Analysis under 102 is further complicated because some acts (public knowledge, use, sale or offer for sale, and prior invention) under the pre-aia 102 don't count unless they occurred in the United States, while others (publication and prior patents) can take place anywhere in the world. 5

6 Happily, under post-aia 102, there are no geographic limitations. The same analysis is applied worldwide. If a fact pattern presented as an exam question does not satisfy at least one of the listed circumstances under old or new 102, then it is not prior art. Just because something existed in the past does not mean it is prior art against which a later invention must be measured. If it is not prior art then it cannot be used to determine directly whether an invention is patentable. If something is prior art and it also is the same as a claimed invention (it has all the elements and limitations of a given claim) then that piece of prior art is an anticipation. The existence of an anticipation precludes issuance of a patent. MPEP cite-2131 No one can possibly remember all of the possible combinations that can be made under these seven sections, and you should not rely on your memory. Rather know how to find 35 USC 102 in the MPEP quickly and rely on that plus your scratch paper to work through the question. Note: Through the course, you will develop a thorough understanding of old and new 102! APPEAL Second actions or Final Rejections can be appealed to the Board of Patent Appeals and Interferences. The appeal begins by filing a Notice of Appeal, of course paying the fee, either before or after a response to the Final Rejection is filed. Extensions of time may have to be bought to keep the application alive until the date that the Notice of Appeal is filed. Within two months or an extension thereof from the date that the Notice of Appeal is received at the Patent Office, which may be different from the date of filing if filing is accomplished using the Certificate of Mailing procedure, the applicant must file an Appeal Brief. The Examiner will respond with an Examiner's Answer, which may include new grounds of rejection. A Reply Brief may be filed by the appellant. An oral hearing may be requested within two months after the date the Examiner's Answer is sent, and the usual fee paid. An applicant can, during the time the appeal is pending, present only very limited amendments and evidence. The appellant may at any time withdraw the appeal but unless there are claims allowed such withdrawal results in abandonment of the application. The Board may affirm the Examiner in whole or part, or reverse the Examiner, sometimes setting forth a new ground of rejection. The new ground of rejection is binding upon the 6

7 Examiner unless an amendment or showing of facts not previously of record overcomes the rejection in the opinion of the Examiner. If the Board makes a new rejection the applicant has two options: 1. submit an amendment or showing of facts and have the matter reconsidered by the Examiner within the period set by the Board in its decision; or 2. ask for reconsideration by the Board of the Board's decision. An applicant dissatisfied with the decision of the Board may seek review by the Court of Appeals for the Federal Circuit (CAFC) or the U.S. District Court for the Eastern District of Virginia, as he or she may elect. If no appeal is taken from a decision of the Board, the file is returned to the Examiner. If no claims are allowed, the application will become abandoned as of the date an appeal to the CAFC or district court should have been lodged. If claims are allowed and the appeal is unsuccessful, withdrawn, lost, or dismissed for failure to file an Appeal Brief, the Examiner will cancel the rejected claims and issue a notice of allowance. Appeals to the CAFC or the district court are not within the Patent Office and hence are not tested. MPEP cite-1200 The intricacies of appeal are a favorite topic. APPLICATION A patent application is the set of papers that is examined by the Patent Office during its pendency, and that becomes either abandoned or issued as a patent. The applicants are the inventor or inventors, and they own the application until such time as they may assign their ownership in whole or part to another person or entity that can hold title to property, such as a corporation, partnership, trust, or the like. If they have assigned the application, the owners may apply as the applicant. Applications come in the following varieties: 1. Standard A standard application (utility, design or plant) is not related to another application and not identified as a provisional application. 7

8 2. Continuation A continuation is the second, third, etc. application by the same applicant for the same invention claimed in a prior, nonprovisional application, and filed before the original (parent) becomes abandoned or is patented (co-pending). A continuation is typically filed to restart prosecution after a final rejection rather than appeal. A continuation can be filed under either rule 1.53(b) or rule 1.53(d) (if eligible as a design application). 3. Continuation-in-Part A continuation-in-part (CIP) is also the second application by the same applicant for the same invention claimed in a prior, nonprovisional application, and filed before the original (parent) becomes abandoned or is patented (co-pending). In addition, a CIP repeats some substantial portion of all of the earlier applications and adds matter not disclosed in the earlier applications (New Matter). A CIP cannot be filed under Rule 1.53(d). This is the only type of application which is related to another application that contains new matter. 4. Substitute A substitute is the same application by the same applicants which was not co-pending and hence does not obtain the benefit of the earlier application's filing date. 5. Divisional A divisional is a later application for a distinct and independent invention carved out of a pending application, and claiming only subject matter disclosed in the earlier, parent application. 6. Provisional Application A provisional application is filed to establish an early filing date and has neither claims (optional) nor an oath. It automatically becomes abandoned one year after filing and cannot be examined. Provisional applications must be identified as provisional applications when they are filed. MPEP cites (b), , , , Knowing the distinctions between these kinds of applications and their idiosyncrasies are worth more than a few points. BEST MODE The best mode requirement is the third requirement of 112, first paragraph, and requires the inventor to set forth the best mode known to him or her at the time of filing of carrying out the invention. The test is subjective; if the inventor knew of a better mode but stupidly failed to understand that it was a better mode, he or she has not violated the requirement. Similarly, if an inventor becomes aware of a better mode after his or her U.S. application has been filed, he or she has no duty to file another application. Neither can the application be amended to include the best mode because that would be new matter, and new matter can never, never, never be added to a patent application, and keep an earlier filing date. Neither is there any requirement that the best mode be designated as such; it is sufficient that it be present. 8

9 The best mode is the one known at the time of the U.S. filing. However, if an inventor discovers a best mode between the time that an application is filed in another country and the time that a corresponding application is filed in the U.S., your MPEP says that the U.S. application can still have the same disclosure as the foreign application. MPEP cites (h), 2165 to This "best mode" concept is no more difficult than it appears. The inventor simply has to tell everything about his or her invention in the application, including the best way (mode) to carry out the invention, known to the inventor. That's it. CERTIFICATE OF MAILING/EXPRESS MAIL Papers can be filed in the PTO by either arranging to have them delivered by someone to the PTO in person, or electronically by using the Electronic Filing System ( EFS-Web ), or by mailing them to the U.S. Patent and Trademark Office. If the papers are delivered by the Postal Service then the PTO will accept as the filing date the date the paper is deposited into a mail box or otherwise given to the Post Office, provided that a Certificate of Mailing is provided with or on the papers. Absent a certificate the papers are given as a filing date the date they are actually received by the PTO. For example: I hereby certify that this correspondence is being deposited with the U.S. Postal Service as First Class mail in an envelope addressed to: The Commissioner for Patents, P.O. Box 1450, Alexandria, VA John M. White Registration No. 32,634 Date: A Certificate of Mailing can be used for any paper filed in the PTO except the following: new patent applications; papers filed in an interference which are directed to be filed by hand; agreements settling an interference; and any PCT papers. 9

10 Express mail procedures can be used for filing any paper; Certificate of Mailing procedures are effective for all those except as noted above. MPEP cites-502, 512, and 513 One or more questions on when these procedures can be used is a staple. CLAIMS To get a filing date every patent application must have at least one claim that asserts an invention. The claims may be directed to an apparatus, a method, or a composition. After filing, a claim may be amended. Rather than be amended, a claim can be canceled and replaced by a new renumbered claim having the desired wording and limitations. Claims are either independent, in which case they refer to no other claims and set forth all the limitations and elements of the invention, or dependent, in which case they refer to another claim and incorporate by that reference all the limitations and elements of the claims from which they depend. Multiple dependent claims depend from more than one claim, and follow these rules: 1. A multiple dependent claim cannot depend from another multiple dependent claim. If it does it is improper and is counted in calculating fees as a single dependent claim. 2. A multiple dependent claim can depend from more than one previous claim in the alternative form only ("and" is forbidden; "or" is permitted). 3. In calculating the number of claims for calculating fees, each proper multiple dependent claim counts as the number of claims from which it depends, and each improper dependent claim counts as one claim. MPEP cites (i), (k), (n) EXAMPLE: An application is filed with one independent claim and five dependent claims. Claim 1 is independent and claim 2 depends from claim 1. Claim 3 depends from claim 1 or 2. Claim 4 depends from claim 3. Claim 5 depends from claim 1 and 2. Claim 6 depends from claims 1, 2, or 3. Claim 2 is a proper dependent claim. Claim 3 is a proper multiple dependent claim and counts for two claims. Claims 5 and 6 are improper because 6 depends from another multiple dependent claim and 5 uses and instead of or. Claims 3 and 4 each count for two dependent claims whereas claims 5 and 6 count for one because they are improper. The total number of claims for fee purposes is thus eight. 10

11 Questions on multiple dependent claims and how to calculate the fee for such claims have been a fashion for some years on the exam. If you understand the above example you should get any question correct. 112(f) allows claims to be written with a "means plus function." MPEP cite An apparatus for popping popcorn comprising: a container for containing the corn to be popped with a removable lid; means within said container for stirring the corn during popping; and means for applying heat uniformly to the exterior surface of said container to cause the corn to pop. The "means" elements are each defined as covering the corresponding element or elements in the specification and its equivalent. Two of the three elements that make up the combination of the claim have been claimed as a "means plus function." The phrase means must be present for this section of the statute to apply. If it is not present, it must be explained by the applicant as meaning the same as if it was present. In addition, the applicant may be required to point out the structure in the specification which corresponds to the means in the claim. MPEP cite A Jepson claim is a claim in which the old is set forth in a preamble separated from a recitation of what is new by a clause such as "the improvement comprising." 1. In an apparatus for popping popcorn having a container for containing the corn to be popped with a removable lid, means within said container for stirring the corn during popping, and means for applying heat to the exterior surface of said container to cause the corn to pop, the improvement comprising means for applying heat uniformly to the exterior of the container. Markush groups are used in claims to form a genus where there is no existing classification that creates one. For example, "an element chosen from the group consisting of copper, iron, and silicon." All members of a Markush group must have a common property upon which the claim relies. Consisting and comprising are the two expressions used to define whether a combination of elements is open ended (comprising) or closed (consisting). Comprising means "at least each and every one of the following"; consisting means "each and every one of the following and no more." 11

12 CORRECTION OF INVENTORSHIP The Patent Office can change the inventorship (the exact combination of individuals listed as inventors) by adding or subtracting inventors either for an issued patent or a pending application. The need to change may arise because an inventor's contribution is no longer being claimed in any claim or was added to a claim for the first time, or because an error was made without deceptive intent at the time the application was executed. An inventor need make a contribution to but one claim to be listed as an inventor so canceling that claim will require the inventorship be changed. When the inventorship as set forth in the oath or declaration is wrong, correction can be done by filing a signed Application Data Sheet listing the new inventors, along with a new oath from each inventor not previously listed, along with a fee. If the application has been filed by owners or others of sufficient proprietary interest using a substitute statement, new substitute statements will be necessary on behalf of those newly listed. See 37 CFR MPEP cite ; Rule Inventorship correction is a likely question. NOTE: Inventorship can be corrected by the Patent Office even after issue. CORRECTION OF PATENTS AFTER ISSUANCE After issuance patents can be corrected by the Patent Office in a number of different ways. Certificate of Correction: Mistakes of a clerical or typographical nature, whether by the Patent Office or the applicant, can be corrected by a Certificate of Correction. If the mistake is that of the Patent Office the certificate is free. Substantive mistakes cannot be corrected by a Certificate of Correction. (See 37 CFR ) Reissue: Whenever a patent is deemed wholly or partly inoperative or invalid, the patent owner may seek to have it reissued. The typical grounds are that the claims are too broad or too narrow, that the disclosure contains inaccuracies, that the applicant failed to make a proper claim for foreign priority, or that the applicant failed to make the proper reference to co-pending applications required for domestic priority. A patent that is invalid as not enabling or that does not disclose the best mode cannot be corrected by a reissue. Similarly, subject matter that was deliberately given up during the prosecution of the parent cannot be recovered by reissue. Only the patent owner, not a 12

13 third party, can seek a reissue. If the reissue seeks broader claims, it must be filed within two years of the issue date of the patent. Reexamination: Anyone, including the patent owner, can seek a reexamination to have a patent reviewed on the basis of a substantial new question of patentability raised by a prior patent or publication. New claims, but not broader claims, can be sought in a reexamination. Disclaimer: A patent owner may disclaim (give up) any claim that is discovered to be invalid, and the remainder of the claims then remain valid. A disclaimer must be in writing and recorded in the Patent Office. Inventorship: A patent owner who discovers the inventorship of an issued patent is in error and that the error occurred without deceptive intent can have the Patent Office correct the inventorship by a certificate. (See 37 CFR 1.324) MPEP cite The correction procedures are straightforward and always a source of questions. DESIGN PATENTS A utility patent covers the way something works, a design patent protects the exterior appearance and can overlap copyright and trademark protection. All design patents have a "D" before the number. EXAMPLE: D435,037 is a design patent; 5,476,264 is a utility patent. Since design patents cover the appearance, the drawings constitute the disclosure. In addition to a brief description of the figures, design patents contain only one claim in the form of: The ornamental design for (the article as specified in the Title) as shown, or as shown and described. MPEP cite-1500 A simple question on design patent usually shows up, typically based on the few differences between design and utility patents. NOTE: Design patents are subject to all the same rules and requirements applicable to regular patents, except as follows. 13

14 DESIGN Term is 14 years from grant. No maintenance fees. Only a single formal claim. No PCT possibility. Six months for foreign priority. No Provisional application. UTILITY Term is 20 years from earliest effective filing date. Maintenance fees at 3 ½, 7 ½ and 11 ½ years. As many claims as necessary. Can be filed under PCT. One year for foreign priority. Provisional. Designs have a special expedited treatment procedure available for: a large fee, formal drawings submitted, the results of a prior search, an indication of the field of search, and an IDS submitted based on the search. DISCLAIMER Definition A disclaimer is a renunciation or giving up of one or more claims in a patent. If a patent has one or more claims that are invalid without deceptive intent, then those claims, upon payment of a fee, may be disclaimed without the remaining claims being invalid. All disclaimers must be in writing and recorded in the Patent Office. A terminal disclaimer is a special kind of disclaimer under which the terminal portion of any patent, but not individual claims of a patent, may be given up. For example, if a patent is issued in 1996 and expires in 2005, then a terminal disclaimer could give up that portion of the patent beyond July 4, 1999, or any other date. Terminal disclaimers are used to overcome obviousness type, double-patenting rejections. A disclaimer of the subject matter of a claim can also arise from the conduct of the applicant, for example from a failure: 1. to make claims suggested for an interference or to copy a claim for the purposes of an interference; and 2. to respond to a rejection, or appeal a rejection of a claim copied for an interference. MPEP cites , (u) NOTE: Only claims in a patent can be disclaimed, claims in an application are canceled. 14

15 DOUBLE PATENTING Double patenting rejections are based upon the common sense rule that an inventor or set of inventors are entitled to only one U.S. patent on their invention. When another pending application, or another patent, claims the same invention or the claims being rejected are obvious in view of that other patent or application, then a double patenting rejection is proper. The rejection is broader than that simple common sense rule because double patenting rejections are also proper if the inventors are not the same but the other patent or application also has the same ownership or if the other patent or application has one inventor in common. Double patenting rejections are of two types obviousness and same invention (anticipation). For a same invention type rejection, the claim being rejected is of the same scope as a claim in the other patent. A same type rejection based upon a previous patent cannot be overcome. Obviousness type rejections can be overcome by filing a terminal disclaimer. A terminal disclaimer is a giving up of that part of the patent term, which extends beyond the expiration date of the other patent or application. The terminal disclaimer must also provide that the patent will immediately expire if it ceases to be commonly owned with the other patent. EXAMPLE: Claim 1 of pending application 123,456 filed in the name of inventors Smith and Jones is properly rejected on same invention type double patenting based upon an issued patent to Jones. The rejection cannot be overcome even by the disclaimer of the issued patent. EXAMPLE: Claim 1 of pending application 123,456 filed in the name of inventors Smith and Jones is properly rejected on an obviousness type double patenting based upon an issued patent to Jones. The rejection can be overcome by filing a terminal disclaimer providing that the patent to issue from the pending application 123,456 will expire on the same day as the issued patent and that the patent will no longer be enforceable if the patents are ever not commonly owned. MPEP cite-804 Double patenting is trying to claim the same invention or an obvious variant in two separate applications. A question will likely require you to know that where the inventions are the same, the rejection can be overcome only by canceling the claim or claims from one application. Where they are an obvious variant and the two applications are commonly owned, the rejection can be overcome by filing a terminal disclaimer so that the two patents expire at the same time and expire if they ever cease being commonly owned. 15

16 DUTY OF DISCLOSURE/IDS "Each person associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability..." So says Rule 56, the basic rule governing what must be disclosed to the Patent Office and how. Information is material if it alone or in combination makes for a good rejection, or is inconsistent with or contrary to an argument or position taken in the Patent Office. Information Disclosure Statements (IDS) are the preferred way to disclose possibly material information to the Patent Office. In order to be considered by the Office, and thus for the duty of disclosure to be discharged, an IDS must be timely filed and have certain minimum content. An IDS is timely filed within three months of filing or before the first action. If filed after the first action, but before the Final Rejection, the IDS must be accompanied by either a fee or a statement. The statement must indicate that nothing being cited originated from a foreign action mailed more than three months ago, and nothing was known to anyone having a duty of disclosure for a period of more than three months. If filed after allowance or Final Action, an IDS requires the same statement and a special processing fee. An IDS is not permitted in a provisional application. No extensions of time for IDSs are allowed and they cannot be filed after issue fee has been paid. MPEP cites-609, 2000 The duty of disclosure is a fertile area for questions and the basic rules should be memorized. In particular memorize the requirements for filing IDSs within three months from the application filing, after this but before final, and after final or a Notice of Allowance. NOTE: The duty extends not only to the attorney and the inventor but everyone else associated with prosecution. This, for example, might include the owner of the patent or an expert retained to do research in conjunction with responding to an official action. NOTE: Information required to be disclosed extends to all 102 acts, not just patents and printed publications. 16

17 ETHICS A registered agent or attorney who violates the canons and disciplinary rules of the Patent Office may be disciplined by the Patent Office. Basically the Rules boil down to two principles: 1. Don't lie, cheat, or steal. 2. Don't take on any work you don't feel competent to handle and do the best you can for your client within the Patent Office rules. Dividing fees with another practitioner who is not a partner or associate is forbidden unless there is full disclosure to the client, the total fee is reasonable, and the division is in proportion to the services performed by each. Once an attorney/client relationship is formed, the attorney or agent must maintain confidentiality of any information disclosed. Information disclosed without such a relationship may be disclosed and under some circumstances there may be an obligation to disclose. An agent or attorney may not acquire an interest in a litigation or proceeding, but may contract for a reasonable contingent fee, or take an interest in a patent or application as part of the fee. Other facts tested include: 1. each practitioner possessing unprivileged knowledge of a violation of a disciplinary rule must report that violation to the Patent Office; 2. registered agents and attorneys may advertise but the advertising must include the name of the agent or attorney; and 3. a separate bank account for funds belonging in whole or part to a client must be maintained. Commingling client funds with the agent's or attorney's personal funds is forbidden. Patent Office Rules Parts 10 and 11 (back of MPEP) and particularly 11.18(b). Two or three questions on ethics will be included. The answers will be obvious once the issues are separated from the surrounding circumstances, which often suggest that an unethical course of action is the more reasonable one. 17

18 EXTENSIONS OF TIME Two distinct procedures exist for extending due dates automatic extensions (Rule 136(a)) and extensions for cause (Rule 136(b)). Resort can be had to extensions for cause only if an automatic extension is unavailable. The basic rules are: 1. Automatic extensions are available for one month, two months, three months, four months and five months. A total automatic extension greater than five months is not possible. 2. The six-month statutory time limit requirement for all responses to Official Actions cannot be extended. A response to every Official Action must be filed within six months to avoid abandonment. The six month rule does not apply to appeal deadlines, such as for filing appeal briefs. 3. Extensions of time are frequently necessary to make an application which is to be abandoned co-pending with its continuation or division to maintain the effective filing date. MPEP cite (e); Rule NOTE: Due dates for IDSs cannot be extended. Any due date set by statute, such as the six-month absolute deadline for replying to Official Actions or the date for paying the Issue Fee, cannot be extended. The Issue Fee can, by statute, be paid late upon a proper showing, but it cannot be extended. Nothing is more important to the average patent attorney than extensions and nothing is tested more. Know the rules inside and outside and easy points will follow. This is not material to look up but to have absolutely cold. FILING DATE Definition Every application has a filing date, which is the date that application was actually filed, and an effective filing date, which may be the same or may be different. If an application is entitled to domestic priority (35 USC 120) because it is a proper continuation, continuation-in-part, or a divisional application of one or more parent applications, then the effective filing date is the earlier date the parent was filed. The determination is on a claim by claim basis so different claims can have different effective filing dates. MPEP cites (Generally on application continuity), (Filing date sets availability of prior art), 708 (Filing dates effect order of examination by PTO) 18

19 EXAMPLE: An application is a proper continuation of a parent filed in 2003, which is in turn a proper continuation-in-part of an application filed in Claim 1 is supported by the disclosure of the 2000 application and claim 2 is supported only by the disclosure of the 2003 application. The effective filing date of claim 1 is 2000, and the effective filing date of claim 2 is Each claim in an application is entitled to the filing date of the earliest parent application that supports it. Note: Any break in the chain of co-pendency precludes an earlier effective filing date. EXAMPLE: An application is a proper continuation-in-part of an application filed in It purports to also be a continuation-in-part of an application filed in However, the 2000 application was in fact abandoned a month before the 2003 application was filed because a twomonth extension of time was required and only a one-month extension was obtained. The earliest effective date any claim can have is NOTE: Domestic priority (continuations, continuations-in-part, and divisions) moves back the date both for determining whether something else is prior art and also the date that the application has for itself to qualify as prior art under. Foreign priority moves back the date for determining whether something else is prior art, i.e., it is used to fend off prior art. It can, also, however become prior art under new 102 if a US application eventually publishes or a US patent issues. The exam will have questions which require determining the effective date both as prior art and whether something else is prior art. Memorize and understand. You will see the word "proper" early and often on the exam. It always means that the paper has everything that is necessary, and if you answer based upon an opposite assumption, you will not get any points. FINAL REJECTIONS Any second or subsequent rejection by an Examiner can be made final, limiting the applicant's response. A second action can always be made final even though a new rejection is advanced by the Examiner, provided that the new rejection was necessitated by some action of the applicant such as amending the claims. The period for response set by a Final Rejection can be met by either putting the application in condition for allowance or filing a Notice of Appeal. A response that does not place the application in condition for allowance does not end the requirement to respond, nor does an Advisory Action indicating the status of the claims. As an alternative to responding, a continuation can be filed and the parent abandoned. 19

20 As of June 8, 1995, for applications that have been pending more than two years before that date, an applicant may submit a response to a final rejection as a matter of right upon payment of a fee (37 CFR 1.129). After Final Rejection amendments may cancel claims or comply with requirements as to form. Amendments presenting claims in better form for appeal or consideration may also be admitted. Amendments that are refused entry are maintained in the file but are not considered in any subsequent proceedings, including appeal. MPEP cites , NOTE: There is no right to an interview after final. NOTE: Any second or Final Rejection can be appealed, but no first action can be appealed, except in a continuation application. In such a circumstance, if the rejection is the same as made in the parent, the first action can be made final and can then be appealed. Comments: Knowing the rules about what you can do after final is absolutely required. Parts are tricky and non-intuitive so careful study and memorization is the plan. FOREIGN FILING LICENSES If an invention is made in the United States, a Foreign Filing License is required before an application covering that invention can be filed in another country, no matter whether the technology has any conceivable relation to national security. Every application includes an implicit request for a foreign filing license. A Foreign Filing License can be acquired in one of three ways: 1. passage of six months following the filing of the application including a provisional application; 2. by being granted on the filing receipt; or 3. by the granting of a petition asking for one. If the invention is made in another country, even by an American, no Foreign Filing License is required. A Foreign Filing License can be obtained retroactively by a petition with the facts showing that the illegal filing was not intentionally made without a foreign filing license, i.e., the 20

21 requirement for a license was known, but ignored. If a Foreign Filing License is not obtained and a U.S. application issues as a patent, then that patent is invalid. MPEP cite-140 The Exam has almost always included a question on Foreign Filing Licenses. Look for any fact pattern that includes a desire or act of filing a patent application in a foreign country and you will likely have found a question on Foreign Filing Licenses. FOREIGN PRIORITY Several international treaties provide an applicant who files applications on a given invention the benefit of the first filing date in a foreign country which is signatory to the treaty if the second filings are within a year of the first. The first application must be enabling, and a claim for priority must be made in the second application. The benefit of foreign priority is that it moves back the date a reference or act by another must have to be prior art. It does not alter the requirement of 102 that an applicant file in the United States within one year of the first use, publication, or offer for sale (i.e., disclosure). MPEP cite EXAMPLE: Abba Company, located in Amsterdam, files an application first in the Netherlands in 2004, and then files an application in the European Patent Office in 2005 and in the United States in Abba can claim no priority because the filing in Holland was more than a year ago and the filing in the EPO was not the first filing. EXAMPLE: Takai Corporation files an application in Japan and nine months later files an application covering and disclosing the same invention in the United States. The Examiner rejects the claims under 102 citing a publication of a third party which occurred between the time of the Japanese filing and the U.S. filing. The publication can be removed as prior art upon a proper claim of priority. While a translation is not required to claim priority, it is required to remove a reference as prior art. EXAMPLE: Oleg Osshinsky filed an application in Poland in 2004 and then filed an application in the United States within one year thereafter, properly claiming foreign priority. The patent issued in Its effective date as far as being prior art under pre-aia 102(e) is the U.S. filing date, not the date of filing in Poland. EXAMPLE: Nancy Draw filed an application in the United States which was replaced by a proper continuation which was in turn followed by a proper divisional which issued. The date of the patent as a prior art reference under 102(e) is the filing date of the first U.S. application. The effective filing date of the divisional is the U.S. filing date of that first application. 21

22 Confusing as they are, the different effects of domestic priority under 35 USC 120 and foreign priority under 35 USC 119 have tripped up many an exam taker. Favorite tricks are that an application can be reissued to properly claim foreign priority, and that a translation is only required to remove an intervening reference. IN THIS COUNTRY The location of an act in the United States or elsewhere is significant in several situations. First, to be prior art under pre-aia 102(g), an invention must be made in this country (USA). However, an applicant for a patent can now establish a date of invention by acts in a NAFTA country (Canada or Mexico) after December 8, 1993, or in a WTO country after January 1, The purpose of this date is to establish the applicant's own right to a patent and does not move back the date of the applicant's invention as prior art to others under 102(g) except in an interference proceeding. Similarly, as to prior art under pre-aia 102(b), prior sales or public uses must be in this country (USA). To be prior art under pre-aia 102(a) the use or knowledge must be in this country. But, for post-aia 102, acts and publications worldwide count as prior art. Inventions made in the United States, whether by Americans or others, must be granted a Foreign Filing License before a patent application can be filed in any other country. MPEP cite EXAMPLE: Mary Brit makes an invention in the U.K. on January 2, 1996, and reduces it to practice on the same day. She files a U.S. application on June 1, John Roe makes the same invention and reduces it to practice on May 1, Mary Brit will prevail in an interference under 102(g). EXAMPLE: Mary Brit makes an invention and reduces it to practice in the U.K. on January 2, John Bull makes an improvement on Mary's invention on February 3, 1996 without knowing of her invention in the U.K. Bull files an application in the United States on March 3 and Mary Brit files her application on April 3. Mary's prior invention is not prior art to Bull's application under 102(g) even though her invention was made in a WTO country post 1/1/96 because an interference has not been declared. Foreign Filing License questions are a part of every Exam. Questions that refer to an invention or acts outside the United States sometime depend for their answer on these facts and sometimes these facts are red herrings. 22

23 INCOMPLETE APPLICATION An incomplete application is a nonprovisional application that is too informal to be given a filing date. When the incompleteness is corrected the filing date is awarded. To be complete (and get a filing date) the papers submitted must include: 1. a specification containing a description; 2. at least one claim, and; 3. any required drawings. The filing fee, a translation into English and the oath or declaration or substitute statement can be submitted later together with the required fee for doing so MPEP cites-506, An exam without a question of what is required for an application to be complete and what you do when an application is filed with missing pages or a missing drawing would be a rarity. To make the game interesting the exam usually concocts a complex fact pattern and words the question to lead the inattentive astray. INCORPORATION BY REFERENCE An application may incorporate "essential" material by reference to (1) an issued U.S. patent, or (2) a U.S. patent application publication. Essential material cannot be incorporated from (1) a foreign patent or application; (2) a non-patent publication; or (3) a U.S. patent that itself incorporates by reference the essential material from another patent. Nonessential subject matter, typically background material, may be incorporated from publications or foreign patents. Material is essential if it is necessary to comply with statutory requirements of disclosure; it is nonessential if it is not so required. Only specific wording indicating a clear intent to incorporate will work, i.e. incorporate by reference. EXAMPLE: The details of the plunger valve are set forth in column 3, lines of U.S. Patent 4,276,496, the disclosure of which is incorporated herein by reference. 23

24 MPEP cite (p) The PTO has occasionally asked questions requiring a general knowledge of incorporation by reference, more particularly the distinction between essential and nonessential and the permitted source for each. INTERFERENCE Although interferences are, strictly speaking, being discontinued for applications filed on or after March 16, 2013, it is still a possibility for any application filed before that date, or even having at least one claim with a priority benefit from before March 16, We can expect a question on interference to be a possibility for another 20 years or so. An interference is a proceeding in the Patent Office between two applications or an application (including a reissue application), and a patent (but never between two patents) to determine which inventive entity is entitled to obtain claims covering an invention both seek to patent. The party prevails that establishes the earliest date among the filing date of the application and its patents and foreign priority applications, the dates of reduction to practice, if any, and dates of conception coupled with diligence. The procedure resembles a law suit with motions, discovery, briefs, a hearing, and an appeal. The interference is fought over a claim that must be present or copied into each application called the count and that is awarded to the winning party. MPEP cite-2300 The Rules governing interferences are so complex that a number of patent attorneys have created a specialty doing nothing else. For whatever reason the gory details of interference practice have never been tested, except in a very general way, and except as it impinges upon other areas. Our recommendation is not to attempt to learn interference practice. If a question should occur, defer it to the end and look up what you can. There will be one or two questions on the exam that you just won't be able to get. There is no trophy for the best score, or even any recognition. NOTE: One important point that has been tested is that whenever a claim from another patent or application is copied as a claim in your application, the patent or application from which that claim was copied must be identified by patent number or serial number and filing date. 24