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The properINTELLECT Patent Bar Prep Outline is published by

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Copyright 2011.

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Material is derived from the currently tested

Manual of Patent Examining Procedure, Edition 8 Revision 8.

ISBN: 978-0-9848466-0-3

CHAPTER 100: SECRECY, ACCESS, NATIONAL SECURITY AND FOREIGN FILING

101: General

Information NOT Available to the Public: Generally, no information concerning pending or abandoned applications may be made available to the public without authorization of the applicant, the assignee of record, or the agent or attorney of record.

Exceptions:

• Applications that have been published

• Reissue applications

• Reexamination proceedings

Implication of Timing on Availability of Certain Information: If the publication or issue date is later than the current date, information about the publication date (or number) or the issue date may ONLY be given to the applicant, the assignee of record, or agent or attorney of record.

102: Information as to Status of an Application

Status information of an application includes:

Whether the application is pending, abandoned or patented;

Whether the application has been published;

The application number or the serial number plus any one of:

• The filing date of the national application,

• The international filing date, or

• The date of entry into the national stage; and

• Whether another application claims the benefit of the application.

A requester of status information may check the Patent Application Information Retrieval (PAIR) system on the USPTO website or contact the File Information Unit (FIU).

If the application has not been published and is pending or abandoned (including provisional applications), the FIU will give status information only to the following ‘entitled’ individuals:

• The inventor;

• An attorney or agent of record in the application;

• An assignee of record in the application; or

• A person with written authority from a, b, or c.

‘Entitled’ individuals is not a term used by the PTO, but rather it is used in this outline to identify the group: inventor, attorney or agent in the application, assignee of record, or a person granted permission from one of these three individuals.

If the requestor is not one of the four types of individual listed above, status information may still be granted if:

• The application is identified by application number (or serial number and filing date) in a published patent document; or

• It is an application claiming the benefit of the filing date of an application identified by application number (or serial number and filing date) in a published patent document.

However, other information such as whether the application is a Continuation-in-Part (CIP), continuation or divisional application, the date of abandonment of the application or the issue date should only be given to one of the ‘entitled’ individuals identified above.

Even if the requestor is not an ‘entitled’ individual but the application is in the national stage or any application claiming the filing date of a published international application where the US is a designated state, the requestor may receive status information for the national stage application, as well as any application claiming the benefit of the filing date of the published international application.

The best place to start when seeking status information is Patent Application Information Retrieval (PAIR) system on the USPTO website.

103: Right of Public to Inspect Patent Files and Some Application Files (37 § CFR 1.11, 1.14)

Since June 30, 2003, all new applications are stored as official records in an electronic system as an Image File Wrapper (IFW).

If a patent application has been published, all documents relating to the file of the application (whether abandoned or pending) are open to the public upon request. If the published application is a redacted copy, then access will be limited to the redacted version. (37 CFR § 1.14; Patent Applications Preserved in Confidence)

The following unpublished abandoned applications are available to the public:

An abandoned application referred to in a US patent application publication or a US patent;

A pending File Wrapper Continuation application filed under former 37 CFR § 1.62 (File Wrapper Continuing Procedure) of an abandoned application that meets the requirements of 37 CFR § 1.14.

Where only part of an application is incorporated by reference, a non-‘entitled’ requestor must petition for access to or a copy of the incorporated material.

Any party may Petition for Access to a patent application.

Filing requirements for each application to which access is desired:

• Petition for Access – File under 37 CFR § 1.14(h), showing why access is desired and why petitioner believes s/he is entitled to access.

• Proof of Service – Proof that such petition has also been served to the applicant (or assignee or attorney/agent of record) or a duplicate of the petition that the PTO can forward to the applicant, and

• Filing fee.

Provisional applications are generally only available to a member of the public who has received permission from an entitled person. However, like other applications, provisionals may be available through public PAIR if the application is relied on for priority in a US patent.

All reissue documents are open to public inspection under 37 CFR § 1.11(b) (Files Open to the Public).

The filing of the reissue application will be public in the Official Gazette.

Documents associated with Requests for Reexamination are made available to the public once they are scanned into the reexamination database.

Completed requests for reexamination are published in the Official Gazette.

The Board of Patent Appeals and Interferences (BPAI) handles all requests for application documents involved in interferences.

106: Control of Inspection by Assignee (entire vs. partial interest)

An assignee of record of entire interest may appoint an attorney or agent of choice to prosecute the application (37 CFR § 3.71; Prosecution by Assignee).

Further, an assignee may request that an inventor be denied access to the application, and such a request should be filed separately under 37 CFR § 1.14(c) and should be directed to the Office of Petitions.

Note that all issues of appeal go the BPAI and all procedural issues go to the Office/Director of Petitions. This distinction is likely to be tested on the Patent Bar.

An assignee of record of partial interest does not have intervening rights in the prosecution of the application to the exclusion of the inventor, however s/he does have a right to inspect the application.

110: Confidential Nature of International Application

International applications are generally published 18 months after filing. However, publication of the application does not open up public inspection of the Home Copy or Search Copy (see MPEP 1800) except where the US has been designated and:

• The US served as the Receiving Office (for the Home Copy); or

• The US served as the International Searching Authority (for the Search Copy).

120: Secrecy Orders

Secrecy orders are placed on applications that contain information sensitive to national security.

If a secrecy order is placed on an international application, the application will not be forwarded to the International Bureau (see MPEP 1800) until the secrecy order is lifted.

Secrecy orders are valid for one-year terms, however, they may be renewed as many times as necessary.

140: Foreign Filing Licenses

Once an application has been filed in the US, an applicant may not file an application for the same invention in a foreign country within six months without obtaining a Foreign Filing License.

If an applicant files in a foreign country after the US filing but before the expiration of 6 months through error and without deceptive intent, s/he must file for a retroactive foreign filing license.

Petition for a retroactive license must include:

A list of all foreign countries where the application was filed;

The dates the application was filed in each country;

An oath indicating:

• That the subject matter is not under a secrecy order;

• Evidence that the license has been diligently sought; and

• Evidence that the illegal foreign filing occurred by mistake and without deceptive intent;

A penalty fee.

A foreign filing license will not be granted if the invention was made outside of the US, even if the inventor is American.

150: Statements to DOE and NASA

No patents for nuclear material or atomic energy will be issued except under special circumstances.

CHAPTER 200: TYPES, CROSS-NOTING AND STATUS OF APPLICATION

201: Types of Applications

National v. International Applications

A national application is an application that has either been 1) filed with the USPTO under 35 USC § 111, or 2) filed as an international application that has entered the national stage. The filing date is the date of the US filing (either direct or through entrance to national stage).

An international application is filed under Patent Cooperation Treaty (PCT) and has not yet entered national processing at the Designated Office Stage (prior to being processed by the US). Once it is processed by the USPTO, the application enters the National Stage.

Correction of Inventorship in an Application

37 CFR § 1.48 may be used to correct inventorship under certain circumstances. Use the following filings to correct the associated errors:

• 1.48(a): May be used when an innocent error occurred and inventorship was wrong from the beginning in an oath or declaration in a non-provisional application.

• 1.48(b): May be used for a correction in the inventorship necessary during the prosecution (usually due to cancellation or amending of claims) of a non-provisional application and one or more inventors must now be deleted.

• 1.48(c): May be used for amending the claims during the prosecution of a non-provisional application if it results in the addition of an inventor.

• 1.48(d): May be used where an inventor needs to be added to a provisional.

• 1.48(e): May be used where an inventor needs to be deleted from a provisional.

• 1.48(f): Where an oath/declaration or cover sheet was not submitted, inventorship is corrected when the appropriate form is submitted (unless the inventor has declared himself as the sole inventor).

Alternatively, inventorship can be changed by filing a continuing application under 37 CFR § 1.53 (Application Number, Filing Date, and Completion of Application).

Changing inventorship of an issued patent can be done pursuant to § 1.48(a) and § 1.48(b).

Parent Application

The term “parent” applies to an earlier filed application of which a later application (“offspring” application) claims the benefit under 35 USC § 120.

A provisional application is never referred to as a “parent” application.

Original Application

An “original” application is one that is not a reissue; an “original” application may be an offspring application.

Non-provisional (Regular) Application

Non-provisionals are filed under 35 USC § 111(a).

The filing date is the date that the minimum required filings are received by the PTO.

The documents required for a complete non-provisional application include:

(1) Specification;

(2) Claims;

(3) Drawings (if necessary);

(4) Oath/declaration (not required to obtain filing date); and

(5) Filing fee (not required to obtain filing date).

They may claim the benefit of a provisional or another non-provisional.

Provisional Application

Provisionals are filed under 35 USC § 111(b) and 37 CFR § 1.53(c).

An applicant must specify clearly that the application is a provisional or it will be treated as a regular application.

A provisional can be filed for a utility patent only.

The required filings are provisional applications include:

(1) Specification;

(2) Drawings (if required);

(3) Cover sheet; and

(4) Filing fee.

Provisionals are not entitled to the benefit of earlier filed applications.

Provisionals are not examined by the PTO, and they expire automatically after 12 months.

A Notice of Missing Parts will be sent out when: 1) The cover sheet is missing; 2) The cover sheet is incomplete; or 3) The provisional filing fee is not paid.

If “missing parts” are not corrected within 2 months, the application will go abandoned.

An English translation is not required for provisional applications filed in another language (because they are not reviewed by the PTO).

Converting a Provisional to a Non-provisional

The conversion must occur within 12 months, prior to the expiration of the provisional.

A request to convert must be accompanied by:

• Conversion fee, and

• An amendment with at least one valid claim.

A converted application will have the filing date of the provisional application.

Since the patent term is based on the filing date of the provisional when an application is converted to non-provisional, it is often wiser to file the non-provisional and claim the benefit of the provisional. This way the patent term begins on the filing date of the non-provisional.

Converting a Non-provisional to a Provisional

The non-provisional must still be pending and not more than 12 months from date of filing.

To convert a non-provisional to a provisional, an applicant must submit:

(1) A petition requesting the conversion, and

(2) A fee.

Reissue Application

A reissue application takes the place of an unexpired patent that is defective in one or more areas. If issued, the reissue patent will expire when the original patent term ends.

A reissue is generally requested by the patent owner.

A reissue may be filed anytime during the lifetime of the patent.

A reissue filed within a maximum of 2 years may be use to broaden claims. However, any claims that were canceled or any matter removed from the original application in order to gain acceptance cannot be recaptured in a reissue.

All reissue applications for a single patent must issue simultaneously.

Divisional Application

If an application actually claims more than one invention, an applicant may have to remove the claims describing the other invention(s). The applicant may then put these removed claims into a separate - divisional application - which will have the same filing date as the original (parent) application.

The divisional application may only contain subject matter included in the original application.

There must be one common inventor between original and divisional applications.

The original will not become statutory bar as prior art against other claims until one year from the issuance of the original patent.

Divisionals may be filed under 37 CFR § 1.53(b) or (d), however:

• A utility or plant divisional application filed on or after May 29, 2000 must be filed under 37 CFR § 1.53(b).

• A utility, design, plant or the national stage of an international divisional application filed before May 29, 2000 may be filed under 37 CFR § 1.53(d).

A new oath or declaration is only required if a new invention is added to the divisional.

A new assertion as to small entity status is required for divisional applications.

Continuation Application

Continuation is a second application for the same invention claimed in a prior non-provisional application.

Continuations may be filed under 37 CFR § 1.53 (b) or (d).

They must be filed during the pendency of the parent application.

A continuation application must claim the benefit of the prior non-provisional application under 35 USC § 120. Note that the prior application is not abandoned.

No new oath or declaration is required.

A new assertion as to small entity status is required, when applicable.

A continuation must have at least one common inventor with the original application.

The disclosure must be the same as the original application, and no new matter may be presented.

Continued Prosecution Application (CPA) Practice

A CPA is only allowed for a design application (after July 14, 2003).

CPAs may be delivered by fax.

CPAs may only be filed while the design application is still pending, which is prior to: 1) Payment of the issue fee, 2) Abandonment, or 3) Termination of proceedings.

A request for suspension (see MPEP 709) must be filed at the same time as the CPA, if desired.

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