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MPEP 200


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What is the difference between the treatment of national and national stage applications?
Restrictions practice only applies to national stage applications
There is a filing date awarded without oath or declaration with national applications
There is no filing date until oath or declaration is submitted and the fee is paid
Can PCT applications be filed for design or plant patents?
No, only for utility patents
What is the difference between a foreign priority applilcation and domestic priority application?
The date of a prior art US patent under section 102(e) is its filing date
The date of prior art for a foreign filing is not its filing date until the patent is issued
Are omitted claims considered prior art under section 102(e) in a US filing that issues as a patent?
No, not under 102(e)
Omitted claims under 102(a) will be considered prior art as of the issue date of the patent
What is the difference between 35 USC 119 and 35 USC 120?
35 USC 119 has to do with determining priority for foreign applications
35 USC 120 has to do with determining priority for domestic applications
What happens if the deadline to file an application for a foreign priority application falls on a weekend or holiday?
The deadline is automatically extended to the first business day following the weekend or holiday
When is the deadline for filing a design patent originally patented in a foreign country?
Six months
When is the deadline for filing a utility patent originally patented in a foreign country?
One year
Does the date that a US patent becomes prior art under 102(e) move back as a result of a foreign priority?
Does a filing in a freign country that is withdrawn, abandoned, or otherwise disposed of preclude priority based upon a subsequent application filed under 35 USC 119?
In some cases it does not (eg if an application is modified in another country because of incompleteness, then the one year term for filing in the US begins when the application is fully complete, not the original filing date
What must an applicant do to preserve foreign priority?
Ask that he or she be given the benefit
File a certified copy of the original foreign application
What is an EPO application?
European Patent Office application
Can all countries be eligible for obtaining foreign priority?
No, only those in MPEP 201.13
What are the two magic phrases when dealing with correction issues?
Without deceptive intent
With written consent of the assignee
Can inventorship be changed in issued patents?
Yes, under rules 1.48(a) and 1.48(b)
What does 1.48(a) say?
An error occured and inventorship was wrong from the beginning
What does 1.48(b) say?
Inventorship was intially correct but amendment or cancellation of claims deletes the contribution of one or more inventors
What does 1.48(c) say/
If an application having unclaimed subject matter invented in whole or part by unnamed inventors is claimed, then an amendment of the application should be made to add the unnamed inventors
What must a 1.48(a) filing be accompanied by?
A petition including statement of lack of deceptive intent (no proof req) signed by each person being added and each person being deleted
Oath or declaration executed by actual inventors
The required fee
A required written consent of assignee
What must a 1.48(b) filing be accompanied by?
A petition including statement that the inventor's contribution is no longer being claimed
The required fee
What must a 148(c) filing be accompanied by?
A petition including statement of lack of deceptive intent (no proof req) signed by each person being added
An oath or declaration by the actual inventors
The required fee
A written consent by the assignee
What do Rules 1.48(d) and 1.48(e) state?
Errors of inventorship in provisional applications
In 1.48(d), inventors can be added
In 1.48(e), inventors can be deleted in provisional applications
Is a new oath or declaration required when correcting invetorship in a provisional application?
No, because oaths or declarations are not filed in provisional applications
What documents in patent applications determine inventorship?
The oath or declartion in a non-provisional application, and by inventors listed on the cover sheet in a provisional application
What does the patent office recommend when at least one named inventor is correct (MPEP 201.13)?
File a continuation application under Rule 1.53(b)
In which three 1.48 rules is no new oath or declaration required?
Rule 1.48(b), 1.48(d), 1.48(e)
What happens if the 1 year due date to replace a Provisional Application falls on Saturday, Sunday or a holiday?
The due date is the first working day after the holiday or due date
Are IDS's premited in provisional applications?
Can non-provisional applications be converted to provisional applications?
Yes, within the first year of filing
What is necessary in Provisional Applications (MPEP 201.04(b))?
A specification satisfying first paragraph of 112
A necessary drawing
A required fee
No oath or declaration requred
Can an application replacing a provisional applocation be filed by Express Mail on Saturday, Sunday, or a holiday?
Yes, provided your post office will accept it
You can also wait for the first day after the holiday
What does a cocmplete provisional application comprise of MPEP 201.04(b))?
A cover sheet identifying the application as a provisional applicant
It comprises of the name of the inventor, residence of each invetnor, title of invention, name and registration number of the attorney or agent, the docket number of the filer, and the ccorespondence address
A specification as prescribed by 35 USC 112
A drawing when necessary to understand invention
A required filing fee
What happens if the cover sheet is missing or incomplete of the filing fee is not paid in a provisional applications?
A Notice of Missing Parts is sent
Two months are given to complete filing or else it is abandoned
What is an application without a proper cover sheet identifying it as a provisional application treated as?
It is treated as a non-provisional application
Does the time that the provisional application is pending count against the twenty year from effective filing date term of a US Patent?
No, the term "parent" is not used to describe a provisional application, but solely in conjunction with 35 USC 120 domestic priority
What type of patent can a provisional application be filed for?
A provisional application can be filed only for a utility patent
What are seven things you cannot do for Provisional Applications?
Examination or amendment
Weekend/holiday extension
Design applications
Claim for priority
IDS statements
Is a substitute application a copending application?
No, a substitute application is an entirely new application
What are four types of applications made after the initial?
What is a Continuation?
Second, third, etc application by the same applicant for the same invention
Typically filed to restart prosecution after a Final Rejection rather than appeal
Fresh papers with new oath (1.53(b))
Based on parent application using same file (1.53(d))
Filed before parent application becomes abandoned
What is a Continuation in Part?
Repeats some substantial portion of all of the earlier applications
Adds new matter
Can be filed only with fresh set of papers with new oath (1.53(b))
Filed before parent application becomes abandoned
What is a Substitute application?
Same disclosure as an earlier application
Not copending with other application
What is Divisional application?
It can be filed for a distinct or independent invention carved out of a pending application and claiming only subject matter disclosed in earlier parent invention
What is a CPA?
Continued Prosecution Application
Defined by Rule 1.53(d)
This has same serial number as its parent and no reference to the parent is inserted into the specification
What claims are excluded from being carried over in a CPA?
The election of the parent application
Can CPAs be filed for provisional applications or PCT applications?
Cannot be filed for provisional applications
Can be filed for PCT applications only if they are in a national stage

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