PATENT BAR EXAMINATION Study
Materials. All questions 1991 - April 1999 collated by frequency of occurrence.
An analysis and report of the content of the patent
bar exam questions 1991 - April 1999. Presented in total, by frequency
of occurrence.
QUICK FETCH OF THE IMPORTANT FILES
QUESTIONS 1991 - April 1999.
A listing of all questions asked 1991-
1999.
A tabulation of how often each subject was
asked. Collated by paragraph number and sub-paragraph letter (a), (b), (d),
etc. 1991-1999.
A tabulation of how often each subject was
asked, but redacted to paragraph number only. No subparagraphs ie, a, b, c.
etc. 1991-1999.
All questions listed and cross indexed along
with cross indexes to MPEP, 37CFR, 35USC paragraph from the
1991 - April 1999 Patent Bar Exams. .
This is cross-referenced index based
primarily on questions asked in prior exams. Question Identification has been
removed, so it can be taken into the exam. Much easier to use and more
comprehensive than the indexes provide in the MPEP.
Many of the index lines contain a brief summary of the subject, thereby
relieving the examinee of the need to look it up. Especially for niggling
details like FEE/NOFEE.
The important data in these files are in plain ASCII, and can be manipulated
by most word processors and other text editors. Just (optionally) knock off
the HTML header stuff and enjoy.
These files can be sorted by subject or MPEP/CFR/USC paragraph
to make a tabulated listing of what is asked often.
SORT.EXE in Windows 98 (95 also??) will do it.
SORT.COM in DOS 5 (maybe DOS 6 also??) will not work.
Before sorting the frequency-of-asking files, you should re-combine the
line-wrapped lines onto 1 line each. Otherwise the sorter will scramble
the wrapped fractions. Alternatively, Email me and I will send a non-wrapped
version.
Note: SORT.EXE is probably in the \windows\command directory.
Patent Bar Exam Questions
Prepared for use as an cross-index at the Bar Exam.
1991 - April 1999
Created October 11, 1999
My patent barexam study files, including this one, can be listed
or printed by most word processors.
Use the "programmer", ASCII, Non-Document, or "Flat" modes.
Or whatever your word processor calls the unformatted mode.
LIST.COM will list and print these files.
NOTE: == This file lists every question asked on the Patent Bar since
1991 to April 1999. 1996 and 1997 Exams are based on MPEP 6th
Edition. The 6th Edition has greatly expanded Sections 700
and 2100. A great many answers to the 1997,98, and 1999 test are
found directly in section 2100.
Questions having the same answer are collected and counted,
forming a histogram of occurrences. The dates and question
numbers shown are the last occurrence of the question
using the answer shown.
Remember, rules change. What was correct when the question
was asked may no longer be correct. Verify with the latest
information, including the OG.
Note 2 == Just because the law paragraph is the same, there is no
assurance that the question is the same. They may refer
to different points within the same law paragraph.
Most of the questions are based on MPEP, 5th Edition.
The 1996 exam is presumed to be based on the 6th Edition.
Significant changes were made between the editions,
particularly, much of chapter 7(?) was consolidated in
other chapters and 2100 greatly and usefully expanded.
Question numbers containing an A are from the afternoon
session, when the afternoon test had questions as well as
claim drafting. (April 1994 and earlier).
Note 3 == Print this file using a 15 pitch font (esc g) to ensure
that most entries print on only one line. If you need
help in setting your printer to 15 pitch (or 20 pitch),
Download PRINTDOC.BAS or PRINTDOC.EXE which will print these
files in a form that can be put into a 3 ring binder.
Email me at bross@seanet.com and I can send a formatted
printout...
Note 4 == Remove these unumbered notes and the unumbered pacing form
at the end of this file before re-sorting.
============================================================================
============================= END OF NOTES =================================
----------------------------------------------------------------------------
Use this form as a practice answer sheet.
Take this form to the test as a pacing and timing,
and error correction tool.
-- TEST PACING FORM --
MARK ANSWERS IN TEST BOOK OR HERE TO PREVENT GETTING
OUT OF ORDER OR FIXING ANSWER KEY WHEN YOU DO
FIND YOURSELF MARKING THE WRONG BOXES.
TIMES ARE THE PROJECTED FINISHING TIMES
FOR THE NUMBERED QUESTION.
TIMES ARE CLOCK ONLY IF THE TEST BEGINS PROMPTLY ON THE HOUR.
OTHERWISE, SUGGEST YOU SET A CLOCK AT 0 FOR THE START.
0: 0:00 25: 1:30
1: A. B. C. D. E. 26: A. B. C. D. E.
2: A. B. C. D. E. 27: A. B. C. D. E.
3: A. B. C. D. E. 28: A. B. C. D. E.
4: A. B. C. D. E. 29: A. B. C. D. E.
5: A. B. C. D. E. 0:18 30: A. B. C. D. E. 1:48
6: A. B. C. D. E. 31: A. B. C. D. E.
7: A. B. C. D. E. 32: A. B. C. D. E.
8: A. B. C. D. E. 33: A. B. C. D. E.
9: A. B. C. D. E. 34: A. B. C. D. E.
10: A. B. C. D. E. 0:36 35: A. B. C. D. E. 2:06
11: A. B. C. D. E. 36: A. B. C. D. E.
12: A. B. C. D. E. 37: A. B. C. D. E.
13: A. B. C. D. E. 38: A. B. C. D. E.
14: A. B. C. D. E. 39: A. B. C. D. E.
15: A. B. C. D. E. 0:54 40: A. B. C. D. E. 2:24
16: A. B. C. D. E. 41: A. B. C. D. E.
17: A. B. C. D. E. 42: A. B. C. D. E.
18: A. B. C. D. E. 43: A. B. C. D. E.
19: A. B. C. D. E. 44: A. B. C. D. E.
20: A. B. C. D. E. 1:12 45: A. B. C. D. E. 2:42
21: A. B. C. D. E. 46: A. B. C. D. E.
22: A. B. C. D. E. 47: A. B. C. D. E.
23: A. B. C. D. E. 48: A. B. C. D. E.
24: A. B. C. D. E. 49: A. B. C. D. E.
25: A. B. C. D. E. 1:30 50: A. B. C. D. E. 3:00
=============================== end of notes ==============================
. :00
.NOTES :00
. :01 Sort this file in various ways to emphasize the
. :02 information in various ways.
. :03 Sort on left end for grouping by reference.
. :04 Sort on 13th character (:) to order by date.
. :05 sort on 25th character to order by summary.
. :06
. :06
. :061 SORT.COM in DOS 5 and under sorts files less than
. :062 64Kbytes. SORT.EXE in Windows 98 (maybe in 95)
. :063 will sort most big files. I have sorted 40 megabyte
. :064 files, but sometimes an unknown limitation error
. :066 shows up. Occasionally this can be overcome by
. :067 sorting SORT /+1 targetfile .
. :068 Otherwise use SORTBIG as follows:
. :07 A sort program for big files like this one is
. :08 available at http://www.seanet.com/~bross/sortbig.bas
. :080
. :080
. :09
. :09
. :10 REFS: m= MPEP, c= 37CFR, u= 35USC,
. :11 pct= Patent Co-operation Treaty, pr= PCT rules.
. :12 --- = spacers and deleted questions
. :13
. :13
. :14 Entries without question date and numbers are either
. :15 cross indexed or entries considered so important
. :16 that their study is recommended, and the probability
. :17 of them appearing on a future test is quite high.
. :18
. :18
. :19 The numbers after the month are the numbers of the
. :190 Exam question. NOT a day date.!!
. :20
. :21 -----------------------------------------------
. :22 TEST QUESTIONS, 1991 - 1995; MPEP 5TH EDITION
. :23 TEST QUESTIONS, 1996 ; MPEP 6TH EDITION, Rev 0 or Rev 1
. :231 TEST QUESTIONS, 1997 ; most likely Rev 0 and Rev 1,
. :232 ; possibly Rev 2 also.
. :233 TEST QUESTIONS, 1998, 99 ; MPEP 7TH EDITION, Rev 0
. :282
. :282
. :282
. :282
CROSS LISTED BETWEEN 35USC, 37CFR, MPEP
! = important subjects and subject cross reference
: = other important stuff covered in a recent bar review course.
{ = Alphabet, A-Z
| = is PRE * index. Download www.seanet.com/~bross/notes.htm for the notes.
= index of old tests.
This file best printed with 12, 15, or 17 characters/inch AND line
wrapping for over length lines.
The important data in this file is in plain ASCII. Stripoff the HTML header
and/or the notes then print or re-sort as needed.
===========================================================
m1512 :99 Apr 3.
m1512 III :99 Apr 46
m1512 II :99 Apr 46
.REF SUMMARY CROSS REF
----7 test # Ax are afternoon session questions
----9 Test # Ax are afternoon session questions
----5----- Test Questions #Ax are afternoon session
none no paragraph listed for Q 31.
----13---- 1997 Afternoon and morning sessions are not segregated.
----14--- 1998 Test question # with . are morning questions
----15--- 1999 Test question # with . are morning questions
----4--- Spacer
----8-- Spacer
----1--- Spacer
----11-- Spacer
----12- Spacer
----6-- Spacer
----3--- Spacer
----10---- Spacer
----2--- Spacer
{ A
c1.137 Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee.
c1.137 a Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee.
c1.137 a3 Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee.
c1.137 b3 Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee.
c1.137 c Abandoned Application, revival of. See also 1.316 if for non-payment of issue fee. (c)=Terminal Disclaimer required
u102 c ! Abandoned Invention
*21* | ABANDONMENT 711.04a, 1.135
: ABANDONMENT 711.04a, 1.135
m711.02 Abandonment =711. -02=failure to take action during stat period c1.135
m711.02 b Abandonment by termination of proceedings. -02b
c1.135 c Abandonment for failure to respond within time limit. m710.02
c1.135 Abandonment for failure to respond within time limit. m710.02
c1.135 b Abandonment for failure to respond within time limit. m710.02
m711.02 a Abandonment for insufficiency of response. -02a
c1.138 : ABANDONMENT, EXPRESS 1.138
m711.03 Abandonment, reviving unintentional abandoned app. c1.137
m711.03 c Abandonment, reviving unintentional abandoned app. c1.137
m203.07 Abandonment. Failure to pay issue fee.
m608.01 b Abstract, format
*13* | ACCELERATED EXAMINATION 708.02, CFR 1.102
u122 : ACCESS TO PTO FILES U122
c10.64 a3 Acquisition of interest in application.
m2138.05 : ACTUAL REDUCTION TO PRACTICE. ARtoP = working & tested model containing every claim element, have utility, not necessarily ready for market.
c1.102 : ADVANCEMENT OF EXAMINATION. MAKE SPECIAL. m708.02, CFR 1.102 no fee for age, health, env quality, energy, super conductivity
c10.32 Advertising see also 10.33, 10.34, 10.35
: ADVERTISING, BUSINESS DEVELOPMENT 37CFR 10.31 - 10.35
c10.34 ! Advertising, fields of practice wording. include reg #
c10.32 c Advertising, include name
c10.34 b Advertising, permitted wording in advertising, agent (b)
m716.01 b Affidavit of non-obviousness. see 716.01(a) also.
m715.07 c Affidavit that the invention was done in US, NAFTA, or WTO countries. u104
c1.131, u104: AFFIDAVITS - NOTE ACTIVITIES MUST BE IN US (NAFTA)
c1.132, u104: AFFIDAVITS - NOTE NOT FOR 132 AFFIDAVITS
c1.195 Affidavits after appeal, not admitted xcpt good for reason
m201.06 a ! Affidavits in continuations
m716 Affidavits or declarations traversing rejections c1.132
c1.131 ! Affidavits, Swearing back, affidavits overcoming rejections m715
c131, c132 : AFFIDAVITS, TYPES OF, c131 = procedural (swear back). c132 = factual (traverse)
m715 : AFFIDAVITS, USE OF, TYPES OF, 1.131 715
c1.131 : AFFIDAVITS, USED FOR, NOT USED FOR 1.131
m715.04 Affidavits, who may make affidavits or declarations
m716.01 c Affidavits. c1.131 vs 1.132. 1.131 is for prior art rejections where invention is before reference such as u102a or e. 1.132 is for u102 f and g commonly owned or commonly assigned at the time later invention was made.
m715.01 Affidavits. c1.131 vs c1.132 1.131 is for overcoming 102(a), (e) Invention prior to reference. ok if ref is apps own invention. 1.132 is for u102(f) (g) 103. commonly owned or obligated to assign.
m409.01 f After allowance, Executor should but is not required to act.
c1.36 Agent withdraws or revocation of power of attorney. Commissioner must authorize withdrawal c1.613(d) for withdrawal. m402.06
m402.06 Agent withdraws. c1.36
m2223 Agent withdraws. in reexamination proceedings. 30 days to go limit m402.06
c10.31 ! Agents not to practice trademark law
c10.11 ! Agents/Atty, removal from roster.
m1302 : ALLOWANCE, GROUNDS FOR 1.109, 1302.14
c1.311 : ALLOWANCE, NOTICE OF, WHAT NEXT? m714.16 3 mo to pay fee, no extension, no amend as matter of right, Commis approves b4 issue fee paid, petition & pet fee & good reason after issue fee paid.
c1.111 : ALLOWANCE, RESPONSE TO, 1.111
c1.313 : ALLOWANCE, WITHDRAWAL FROM, 1.313
*32.2* | AMENDED TWICE, FORMS 714.22, C1.121
m714.14 Amendment after allowance of all claims.
c1.312 Amendment after allowance of patent (ie grant, notification) m714.16
m1207 : AMENDMENT AFTER APPEAL MPEP 1207
*32.9* | AMENDMENT AFTER APPEAL BOARD DECISION 1214.01, 1214.06
c1.116 Amendment after final action
c1.116 a Amendment after final action
c1.116 b Amendment after final action
*32.10* | AMENDMENT AFTER FINAL REJECTION OR ACTION 714.12, 714.13 C1.116
m714.13 Amendment after final rejection, Procedure. two months from date of mailing special rule.
m714.12 Amendment after final rejection. Canceling, complying, better form allowed. c1.116
m1480, 81 : AMENDMENT AFTER ISSUE, CERTIFICATES OF CORRECTION
*65* | AMENDMENT AFTER ISSUE, CERTIFICATES OF CORRECTION m1480, 81
m714.16 Amendment after notice of allowance c1.312
*32.8* | AMENDMENT AFTER NOTICE OF ALLOWANCE 1.312 M714.14 M1303.01
m714.09 Amendment before first office action
c714.19 ! Amendment denied entry (list)
m1207 Amendment filed with or after appeal
c714.22 : AMENDMENT FORMS. IN CLAIMS [ bracket deletes ]. underline adds amended claims (not renumbered) must have the word "(amended)" inserted by number. () not to be used !! 714.22
*32.2* | AMENDMENT FORMS. IN CLAIMS [ brackets delete ]. underline adds amended claims (not renumbered) must have the word "(amended)" inserted by number. () not to be used !! 714.22
*20.2* | AMENDMENT FORMS. IN RE-EXAMINATIONS.
c1.121 f : AMENDMENT FORMS. IN RE-EXAMS Different rules for Re-exams . 1.121f
c1.121 e : AMENDMENT FORMS. IN RE-ISSUES Different rules for Re-issues. 1.121e
*20.1* | AMENDMENT FORMS. IN RE-ISSUES Different rules for Re-issues. 1.121e,f
*20* | AMENDMENT FORMS. IN REISSUES AND RE-EXAMINATIONS. Different Rules.
: AMENDMENT FORMS. IN SPEC -- adds between dashes -- "deletes between quoties" where insertion point and action is described. Pressman 13/34
*32.3* | AMENDMENT FORMS. IN SPEC -- adds between dashes -- "identify place of insertion or deletion between quoties"
*32* | AMENDMENT FORMS:
m714.02 Amendment must be fully responsive. in writing, distinctly and specifically point out error, must respond to each ground, must appear to be a bonafide effort to advance the application to final action. General allegation no good. c1.111(b)
m714.24 Amendment of amendment. c1.124
c1.124 Amendment of amendment. amended twice, etc m714.24
c1.121 c Amendment of claim. can use spec form for 5 or less words.
m2163.05 a Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK)
m2163.05 Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK)
m2163.05 c Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK)
m2163.05 b Amendment of claims, change in scope. a = broadening claim (do not in reissue). b = Narrowing or subgeneric claims (need support in disclosure). c = changing range limitations ("at least" has no upper limit. BAD FORM)(r1 "and" r2 is inclusive. OK)
c1.119 Amendment of claims. Cancel&present new. amend per c1.121. Point out patentable distinction per c1.111
*32.6* | AMENDMENT OF THE DRAWINGS 608.02 entered. (10) (11)
*32.3* | AMENDMENT OF THE SPECIFICATION: -- adds between dashes -- "identify place of insertion or deletion between quoties"
m714.15 Amendment received in Examining Group after notice of allowance.
c1.117 Amendment required for ---- reasons
m714.19 (1) Amendment to be denied (list of).
m714.19 (10) Amendment to be denied (list of). Drawings, No new matter. not to be entered. (10)
m714.19 (11) Amendment to be denied (list of). No insults, Group director decides (11)
m714.04 Amendment to claims with no attempt to point out patentable novelty.
m714.01 d Amendment, improper signature(s) on,. not admitted. definitions of proper sig. d = enter if signed by applicant instead of atty.
m714.22 Amendment, directions for entry of,.
m1302.04 Amendment, examiner's amendment and changes
c1.121 : AMENDMENT, HOW TO
c1.121 Amendment, including claim, method, style m714.22
c1.121 b2 Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended".
c1.121 b2ia Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended".
c1.121 b2ii Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended".
c1.121 b2ib Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended".
c1.121 b Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended". m714.22
c1.121 b2iii Amendment, Method of Making. Rules for claims { [delete] __ add __ } . use word "amended". m714.22
m608.04 b Amendment, new matter by prelim amendment
c1.118 Amendment, no new matter
c1.118 a Amendment, no new matter
c1.121 a2ii Amendment, of specification m714.22
c1.121 a Amendment, of specification m714.22
c1.121 a2i Amendment, of specification m714.22
c1.115 : AMENDMENT, PRELIMINARY
m608.04 c Amendment, review of examiner's finding of new matter
c1.115 Amendment, when appropriate
c1.121 f Amendments in Re-examination, method
c1.121 e Amendments in re-issues. Submit entire claim sentence with deletes bracketed [ ] and adds underlined. or indicating exact words to strike and ul adds.
m1453 ! Amendments to Re-issue appl.
*20* | AMENDMENTS, DIFFERENT RULES FOR REISSUES. 1.121e,f
: ANTEDATING AFFIDAVITS U 102a, U102e, MPEP 715, CFR 1.131a, Pressman 3-4 (swearing behind)
*29* | ANTEDATING AFFIDAVITS U 102a, U102e, MPEP 715, CFR 1.131a, Pressman 3-4 (swearing behind)
: APPEAL / PETITION DEFINITIONS, USES
: APPEAL / PETITION GENERAL INFORMATION
: APPEAL / PETITION LIST
: APPEAL / PETITION TIMING
*58* | APPEAL / PETITION / REQUEST, DISTINCTIONS BETWEEN
*32.9* | APPEAL BOARD DECISION, AMENDMENT AFTER 1214.01, 1214.06
c1.192 : APPEAL BRIEF, CONTENTS m1206
*17* | APPEAL BRIEF, CONTENTS, SEQUENCE OF EVENTS 1206, 1.192
c1.191 a Appeal to board of Appeals and Interferences u134
c1.191 b Appeal to board of Appeals and Interferences u134
c1.191 Appeal to board of Appeals and Interferences u134
c1.197 Appeal, action following decision.
: APPEAL, AMENDMENTS AFTER, MPEP 1207
m1214.05 Appeal, cancellation of withdrawn claims
m1216.02 Appeal, Civil suits under u145
m1201 Appeal, distinction between board and commissioner
m1206 Appeal, duration of extensions
m1214.06 Appeal, examiner sustained
: APPEAL, EXAMINER'S ANSWER TO, 1208
c1.193 b2ii Appeal, examiner's answer. (to Board of Interferences and Appeals)
c1.193 b2i Appeal, examiner's answer. (to Board of Interferences and Appeals)
c1.193 b1 Appeal, examiner's answer. (to Board of Interferences and Appeals)
c1.193 b Appeal, examiner's answer. (to Board of Interferences and Appeals)
: APPEAL, FURTHER REVIEW OF BOARD DECISIONS U 141, 1.301 et seq
: APPEAL, NOTICE OF
m1205 Appeal, notice of appeal
: APPEAL, OF REJECTION, WHEN
c1.194 ! Appeal, Oral Hearings in. fee. One month; 3mo if new grounds of rejection. 20 min for applic. 15 min for examiner. m1209, c1.194
m1214.01 Appeal, procedures after decision by board. c1.196
m1212 Appeal, remand to board to reconsider. c1.195
m1214.07 Appeal, reopening prosecution. not a right. amendment placing case for allowance should be entered.
: APPEAL, REPLY TO EXAMINER'S ANSWER TO APPEAL 1208.03
: APPEAL, REQUEST FOR RECONSIDERATION 1.197 NO FEE
m1213.02 Appeal, statement to rejection of allowed claim
: APPEAL, SUPPLEMENTAL EXAMINER'S ANSWER AND SURJOINDER BRIEF 1208.04
: APPEAL, TO WHOM 1.181 - 1.184
m1215.03 Appeal, withdrawal of some claims
m1215.01 Appeal, withdrawal or dismissal of appeal.
m1215.02 Appeal, withdrawal or dismissal of appeal.
m1215.04 Appeal, withdrawal or dismissal of appeal.
*17* | APPEALS CFR 1.191, CFR 1.192, CFR 1.193, mpep 1206, 2273 reX, USC 306
: APPEALS CFR 1.191, CFR 1.192, CFR 1.193, mpep 1206, 2273 reX, USC 306
u7 : APPEALS, BOARD OF, COMPOSITION OF USC 7
: APPEALS, DECISION BY BOARD OF APPEALS 1.196 1213
m1204 : APPEALS, SPECIAL CASES AT THE BOARD, 1204
c1.192 a Appellant's Brief board of appeals and interference. 2 mo. triplicate fee args. later args refused.
c1.192 c Appellant's Brief board of appeals and Interference. Content and order (except by pro-se applicant)
c1.192 Appellant's Brief board of appeals and Interference. contents, timing
c1.192 c6iv Appellant's Brief board of appeals and Interference. specify errors in rejection reasons.
c1.192 c5 Appellant's Brief. board of appeals and Interference. all claims stand/fall together. unless argued separately
m605.01 Applicant's citizenship, must state. u115
m716 ! Applicant's disclosure, Operability, Inoperability to traverse rejection c1.132
m605.02 Applicant's residence
m605 Applicant, who etc. c1.41
c1.41 Applicant, Name format m605.04b
pct09 Applicant, PCT. Applicant is not necessarily the inventor
u111 a ! Application for patent, required contents of, filing date.
u111 Application for Patent. contents, oath, etc. boilerplate stuff
c1.52 c Application format,
c1.52 d Application format,
c1.52 Application format, paper size, etc
u111 b1A Application is made by inventor. (a)=general provisions. (b)=Provisional Application laws. (b1a)=by inventor
u111 b2 Application is made by inventor. (a)=general provisions. (b)=Provisional Application laws. (b1a)=by inventor (b2)=no claim rqd in provisional.
c1.77 : APPLICATION ORDER AND ELEMENTS CFR 1.77
*12* | APPLICATION ORDER AND ELEMENTS CFR 1.77
c1.431 ! Application requirements, international application
m102 ! Application status public information
* 9.2* | APPLICATION, PROVISIONAL U111
m106 ! Application, access to. Assignee may control.
c1.4 b Application, completeness of
m608.01 p Application, Completeness of application, essential material - defined
c1.51 c Application, contents of. a= contents. b= IDS encouraged. No IDS in a provisional. c= Applicants can setup and use deposit accounts for 1.16-1.18 fees.
c1.14 Application, held in secrecy u122 a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation.
c1.14 a Application, held in secrecy u122 a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation.
c1.14 b Application, held in secrecy u122 a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation.
c1.14 g Application, held in secrecy u122, a= status info available. b= abandoned apps destroyed in 20 yrs unless marked for preservation.
: APPLICATION, MAKE SPECIAL, WHY 1.102, 708
: APPLICATION, ORDER OF EXAMINATION, 1.101, 1.102, 708
c1.109 ! Applications, examination of. reasons for allowance
m104 ! Applications, inspection of, when allowed
: ARGUMENTS
*10* | ARRANGEMENT AND CONTENTS OF SPECIFICATION. MPEP 601 pg 600-2
: ARRANGEMENT AND CONTENTS OF SPECIFICATION. MPEP 601 pg 600-2
: ASSIGNEE'S RIGHTS
c3.71 Assignee, prosecution by, Assignee of entire right may conduct prosecution and exclude prior assignees and/or inventors.
: ASSIGNMENT / OWNERSHIP 3.11, 3.21, 3.24, 3.26-28, 3.31
: ASSIGNMENT AND RECORDING, REQUIRED DATA, C3.21
m302.01 Assignment document must be original or true copy. c3.24
m302.02 Assignment document, translation. c3.26
m201.12 Assignment in divs and conts carries title (CIP does not) m306
m306 Assignment of division, cont, subs, cip in relation to parent case
m301.01 Assignment records of issued patents public. c1.12
c1.12 a Assignment records of issued patents, reissues, open to public.
c1.12 b Assignment records of pending or abandoned applications not open to public. Need proper authority to get.
c1.12 Assignment records open to public
c1.12 d Assignment records. To get -- Need to identify the reel and frame where assignment is recorded, else extra charge.
: ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE CFR 3---
*49* | ASSIGNMENT, RECORDING, AND RIGHTS OF ASSIGNEE CFR 3---
: ATOMIC POLICY
m601.02 Attorney, power of, authorization
{ B
: BARS, 102, DATE CONSIDERATIONS
u119 Benefit of earlier filing date in foreign country, right of priority.
u120 Benefit of earlier filing date in US benefit of earlier filing date in US
m2165.03 Best Mode, Lack of,. Assume best mode is disclosed unless there is evidence to the contrary. BM is at filing. enquiry list here.
m2165.01 Best Mode, Relevant Considerations. a= what is the invention. b= specific examples not rqd. c= designation of best mode not rqd. d= updating best mode not reqd. e= defect in best mode not cured by new matter.
: BIOLOGICAL DEPOSITS, ETC 1.801 - 1.809
*16* | blank
* 4* | blank
* 2* | blank
*59* | blank
*63* | blank
*28* | blank
c1.196 f Board of appeals and interference, decisions by, scope of, m1214.01
c1.196 b1 Board of appeals and interference, decisions by, scope of, m1214.01
c1.196 b Board of appeals and interference, decisions by, scope of, m1214.01
c1.196 d Board of appeals and interference, decisions by, scope of, m1214.01
c1.196 Board of appeals and interference, decisions by. m1214.01
: BOX # IDENT CFR 1.1
*14* | BOX # IDENTIFICATION, MAILING CFR 1.1
: BRIEF, APPEAL MPEP 1206 1.192
*17* | BRIEF, APPEAL, CONTENTS AND SEQUENCE 1206. 1.192
c1.3 Business to be conducted with decorum and courtesy
{ C
m608.01 s Canceled matter, restoration of. by new insertion only
c10.40 a,b4 Cannot quit employment except for -- a= withdrawal. b= mandatory withdrawal. c= permissive withdrawal.
c10.40 a Cannot quit employment except for -- a= withdrawal. b= mandatory withdrawal. c= permissive withdrawal.
c10.40 b4 Cannot quit employment except for -- a= withdrawal. b= mandatory withdrawal. c= permissive withdrawal.
u255 Certificate of correction, Applicant's mistake, no new matter, fee reqd.
m1411.01 Certificate of correction, incorporate in re-issue copy
u254 Certificate of correction, PTO mistake. c1.322
u255 ! Certificate of correction. Applicant's mistake u255
: CERTIFICATE OF MAILING 1.8, 1.10
c1.8 Certificate of mailing mpep 512 a1= use-for list. a2= don't use list. b= fixing list. c= additional evidence may be required.
c1.8 a2ia Certificate of mailing mpep 512 don't-use list
c1.8 a2 Certificate of mailing mpep 512 don't-use list
c1.8 a1 Certificate of mailing mpep 512 use-for list
m512 Certificate of mailing page 500-538 c1.8 don't use for -- list
*65* | CERTIFICATES OF CORRECTION
: CERTIFICATES OF CORRECTION
m201.16 Certificates of correction to perfect claim for priority
*22* | CERTIFICATES OF MAILING.
m2133.01 ! CIP applications, rejection of
*33.4* | CIP, RULE 62, NEW MATTER OK M201.08
u145 Civil Action to obtain patent. court may rule for issuance.
* 3* | CLAIM COUNT FOR FEE PURPOSES. 608.01(n)
* 3* | CLAIM COUNT, MULTIPLE DEPENDENT CLAIMS.
: CLAIM COUNT, MULTIPLE DEPENDENT, (INCOMPLETE DESCRIPTION) 608.01A
m2111.01 Claim language, words defined in their "plain meaning" (by skilled in art) unless defined in specification.
m2111.03 Claim language, transitional phrases. Comprising: Consisting of: Consisting essentially of: "comprising, including, containing, characterized by are inclusive or open ended."
c1.126 Claim numbering in amendment
m608.01 o Claim Terminology. claim words supported by spec. avoid synonyms or confusing variety of terms.
m2173.05 q Claim, for use. Need steps of how to use.
m608.01 m Claim, Form of,. Start on separate sheet. "I Claim" or "The invention claimed is". Begin with a Capitol and end with a period. Jepson is c1.75(e)
m2114 Claim, functional language. Apparatus claims distinguished from prior art by in terms of structure rather than function.
m2173.05 u Claim, inclusion of trademarks or tradenames. not prohibited as identifier. prohibited as a limiter.
* 1.5* | CLAIM, JEPSON FORM OF CLAIM. CFR 1.75e
: CLAIM, JEPSON FORM OF CLAIM. Pressman 9-4, 9-20 CFR 1.75e
: CLAIM, MULTIPLE DEPENDENT 608.01A
* 1.3* | CLAIM, MULTIPLE DEPENDENT 608.01(n), No MD from MD. MD claims in "alternative only" (or) form. 608.01n for form. Multiples construed to incorporate by reference all limitations to claim to which it refers.
m2173.05 r Claim, omnibus. are indefinite. u11 m703.06
m2112.01 Claim, product and apparatus. prior art. prima facie case of anticipation or obviousness.
m2113 Claim, product by process. Patentability is on the product, not the process. Not limited by recited steps, only the structure implied by the steps.
m2173.05 p Claim, product by process. separate claims for apparatus and product by process.
c1.78 ! Claiming benefit of earlier filing
c1.75 Claims m608.01 k-o (a)= Spec concludes with claims U112. (b)= more than one claim ok. (c)= dependent claims further limit. MD in alternative only (or). (d)= Antecedent from spec rqd. (e) Jepson form. (f)= numbered consecutively in Arabic numerals. (g)=grouping (h)= start on separate sheet. (i)= indent element listing. m608.01 k - o
: CLAIMS per 112 multiple dependent rules alternative only no multiple from multiple multiples construed to incorporate by reference all limitations to claim to which it refers.
* 1.3* | CLAIMS per 112 MULTIPLE DEPENDENT RULES. alternative only no multiple from multiple multiples construed to incorporate by reference all limitations to claim to which it refers.
* 1* | CLAIMS -- Describe as a structure, not as a functionality!
: CLAIMS -- Describe as a structure, not as a functionality!
m2115 Claims on workpiece rather than apparatus. Does not confer patentability.
c1.75 d1 Claims, forms of. d1=claim must conform to specification and terms and phrases must have clear antecedents.
m2173.05 k Claims, aggregation, rejection on. lack of co-operation between elements.
m2173.05 h Claims, alternative limitations. permitted if unambiguous. (markush forms = "consisting of A and, B and C". or "wherein R is A or B or C.")
*32.2* | CLAIMS, AMENDMENT TO THE CLAIMS: [brackets delete] underline adds. amended claims (not renumbered) must have the word "(amended)" inserted by number. () not to be used !! 714.22
m710.04 a Claims, copying of, causing two periods running together.
c1.75 c Claims, Dependent and multiple dependent claims m608.01 n
m706.03 k ! Claims, double patenting
m806.04 i Claims, Generic
m2173.05 L Claims, Incomplete. omits essential element or relationship. Example given.
m2173.05 d Claims, indefinite. do not put examples "for example, chlorine" or "such as ..:. put in spec.
m2173.05 b Claims, indefinite. imprecision does not automatically render claim indefinite. Ref to a variable object may render indefinite.
m2173.05 e Claims, lack of antecedent.
c1.75 b Claims, more than one permitted. m608
c1.16 d Claims, multiple dependent, surcharged filing fee.
m2173.05 c Claims, numerical ranges and indefinite claim language
m608.01 L Claims, Original,. Applicant may rely on original claims as disclosure for amendment.
* 1.9* | CLAIMS, OTHER LANGUAGE
: CLIENT CONFIDENCE, U122
: CLIENT RELATIONSHIPS 37CFR 10.56 - 10.93
: CLIENT SECRECY, U122
: CODE OF ETHICS, CANNONS 37CFR 10.20 -10.112
*57.3* | COMBINED REFERENCES:
m2133.03 e1 Commercial exploitation
m716 ! Commercial Success to traverse rejection c1.132
c1.181 ! Commissioner, Petition to, to exercise supervisory authority 2 mo time
c1.181 ! Commissioner, petitions to,. FEE sometimes rqd
m804.03 Common owner, different inventors
m2188.02 Common ownership by different inventors.
c1.104 e Common ownership, evidence of. Recorded Assignment, assignment papers, affidavits, corps require officer's affidavit.
pctR47.1 c Communication to Designated Offices. International Search Report goes to Designated offices and/or applicant if requested. PCT A20
pctA20 Communication to Designated Offices. International Search Report goes to Designated offices and/or applicant if requested. PCT R 47
m716 ! Comparative results, tests to traverse rejection c1.132
*11* | COMPLETE APPLICATION IS THE SPECIFICATION PLUS
pctA11 Complete International Application gets filing date if application = residency + prescribed language + statement of intention that it is an international application + designation of a contracting state + name of applicant + a description + a claim.
u134 Completeness and clarity of newly filed applications
m506 Completeness of original application c1.53
m2133.03 e3 ! Completeness of the invention
: COMPOSITION OF BOARD OF APPEALS USC 7
c1.96 b Computer listings as an appendix
c1.96 a1 Computer listings as drawings
m2106 ! Computer Programs, Mathematical Algorithms
u103 Conditions for patentability, non-obvious subject matter, common I or O m2186
u122 : CONFIDENCE, CLIENT U122
u122 Confidential status of applications c1.14
m707.07j ! Constructive Assistance m707.03d, m707.07j
: CONSTRUCTIVE ELECTION
m2183.05 : CONSTRUCTIVE REDUCTION TO PRACTICE & DILIGENCE. U102. CRtoP= describable in U112 terms. make, use, utility
m2183.05 ! Constructive reduction to practice. described(able) in U112 terms. make, use, utility
m2205 Content of prior art citation. Limited to patents and printed publications.
m201.07 Continuation Application. for same invention, copending.
m201.08 Continuation in Part Applications. may contain new matter. copending.
c1.60 : CONTINUATION OF PRIOR APP. RULE 60 no new matter
m201.06 Continuation, Division Rule 60 (1.60)
m201.06 b Continuation, File Wrapper procedure Rule 62
c1.62 : CONTINUATION, FILE WRAPPER, RULE 62 new matter ok
m201.06 a Continuations, c1.60
*33.1* | CONTINUATIONS, RULE 60, NO NEW MATTER C1.16 M201.07
c10.66 Continued employment, refusing.
m201.06 d Continued prosecution application. abandon previous app, no new matter, same term, same inventors, filing date is date of request of continued prosecution much more.
: CONTINUING APPLICATIONS, CHARACTERISTICS
m210.11 Continuity between applications: filing dates. common inventor
m201.11 Continuity between applications: filing dates. common inventor pages200-231
u256 Correction of inventor
c1.48 a Correction of Inventorship m201.03, a= new oath, affidavit of no deception by original named inventors, fee, assignee's written consent. b= revised claims drop inventor then Petition to drop + statement of his stuff is not claimed, fee. c= amending to claim disclosed stuff, but previously unclaimed inventor not named, then same as a. d= Provisionals. add inventor by petition and fee. e= Provisional, removing wrong inventor, petition, fee, written consent of assignee.
c1.48 b Correction of Inventorship m201.03, a= new oath, affidavit of no deception by original named inventors, fee, assignee's written consent. b= revised claims drop inventor then Petition to drop + statement of his stuff is not claimed, fee. c= amending to claim disclosed stuff, but previously unclaimed inventor not named, then same as a. d= Provisionals. add inventor by petition and fee. e= Provisional, removing wrong inventor, petition, fee, written consent of assignee.
c1.48 Correction of Inventorship m201.03, a= new oath, affidavit of no deception by original named inventors, fee, assignee's written consent. b= revised claims drop inventor then Petition to drop + statement of his stuff is not claimed, fee. c= amending to claim disclosed stuff, but previously unclaimed inventor not named, then same as a. d= Provisionals. add inventor by petition and fee. e= Provisional, removing wrong inventor, petition, fee, written consent of assignee.
m201.03 Correction of inventorship Pages 200-209 c1.48
c1.48 d Correction of Inventorship, Provisionals, error. d= req. petition of no intention of deception, + Fee.
*24* | CORRECTION OF INVENTORSHIP. CFR 1.48, MPEP 201.03
: CORRECTION OF INVENTORSHIP. CFR 1.48, MPEP 201.03 U116
c1.324 Correction of inventorship. u256
m1412.03 Correction of patent, broadening reissue claims. Cannot do! u251
m1417 Correction of patent, claim for benefit under u119
m1451 Correction of patent, divisional Re-issue apps. c1.177
m1411 Correction of patent, form of specification. no new matter. c1.173
m1450 Correction of patent, restriction and election of species
m1481 Correction of patent. Applicant's mistake. u255 c1.323
: CORRECTION OF PATENTS (NO NEW MATTER)
m1413 ! Correction of patents, drawings c1.174
c1.322 Correction, certificate of PTO mistake. u254
c1.323 Correction, certificate of. Applicant's mistake. u255
m1411.01 ! Correction, certificate of. Incorporate in re-issue copy
m1481 ! Correction, Certificates of, Applicant's Mistake.
m1480 Correction, Certificates of, Office Mistake.
m1414.02 a Correction, information considered under c1.175
m1416 Correction, offer to surrender original patent
c1.33 A Correspondence mpep 403
c1.33 b Correspondence mpep 403
c1.33 Correspondence mpep 403
* 7* | CORRESPONDENCE IDENTIFICATION CFR 1.5a 502 pg 500-3
m403.01 Correspondence with associate attorney c1.33
: CORRESPONDENCE, BOX # IDENT CFR 1.1 PTO BOX IDENT SEE *14*
*14* | CORRESPONDENCE, BOX # IDENT CFR 1.1 PTO BOX IDENT SEE *14*
m403 Correspondence, with whom. c1.33
m501 Correspondence. Each Application file should be complete in itself.
: CORRESPONDENCE. MPEP 403
*51* | CORRESPONDENCE. MPEP 403
u102 d : CRITERIA
{ D
: DATE OF FOREIGN PATENT DOC. AS A REFERENCE
m2138 : DATE OF INVENTION. M2138.05, U102, U104, 119, 120
: DATE OF REFERENCE, USE OF, ENABLEMENT,
m710.06 Dates misc factors, remail of OA, Errors in dating
m409.01 Death of Inventor or joint inventor terminates power of attorney. need now P of A from heirs.
: DECISION BY BOARD OF APPEALS. 1.196 1213
u144 Decision on appeal (to courts), court's instruction to PTO
* 8* | DECLARATIONS, SAME AS OATH
* 8* | DEFECTIVE OATH, FIXING OF
m1306.01 Deferred issuance of patent c1.314
u100 Definitions
pr02.1 Definitions
u100 b Definitions "process" (b)
*99* | DEFINITIONS OF WORDS.
: DEFINITIONS OF WORDS.
-- Deleted
deleted Deleted
: DELETION OF INVENTOR 1.48B
c1.75 c ! Dependent and multiple dependent claims. m608 n
: DEPENDENT CLAIM - FORM OF. MPEP pg 600-39 (608.01(n) DC must FOLLOW its parent claim.
* 1.2* | DEPENDENT CLAIMS, FORM OF. MPEP pg 600-39 (608.01(n) DC must FOLLOW its parent claim.
* 1.2.1* | DEPENDENT CLAIMS, GROUPING OF DEPENDENT CLAIMS: c1.75(g)
* 1.2* | DEPENDENT CLAIMS. No dependent claim may specify a SUBSTITUTE part for the parent claim.
: DEPENDENT CLAIMS. No dependent claim may specify a SUBSTITUTE part for the parent claim.
c1.25 Deposit Accounts 509.01
c1.25 b Deposit Accounts 509.01
m509.01 Deposit Accounts c1.25
: DEPOSIT ACCOUNTS. CFR 1.25 (for list), 1.51 mpep pg 600-2
*44* | DEPOSIT ACCOUNTS. CFR 1.25 (for list), 1.51 mpep pg 600-2
m2403 Deposit of Biological samples. sometimes required for u112 enablement. deposit rules are c1.801-1.809.
m502 Depositing papers. address, identification rqmts
: DEPOSITS, BIOLOGICAL, ETC 1.801 - 1.809
m2163.04 b Description of invention
m1504 b Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described."
m1503.03 Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described."
m1504.03 a.4 Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described."
m1504.03 a.2 Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described."
m1504 Design patent Claims. One claim only. Reqd preamble = "The ornamental design for -- as shown.", or ".. as shown and described."
m1504.10 Design Patent Right of Priority. U119 a-d and U102(e) are 6 months instead of 1 year. U102(e) not applied to designs.
c1.152 Design patent, -- drawings
c1.153 a Design patent, -- title, oath, description, claim 1503
c1.153 a2 Design patent, -- title, oath, description, claim 1503
c1.153 Design patent, -- title, oath, description, claim 1503
m1502.01 Design Patent, Distinction between design and utility
m1503 Design patent, Elements of a Design Patent
m1503.01 Design Patent, Specification and Claim, Form of Application page 1500-1503 c1.154
u171 Design patents def. new, original, AND ornamental design for an article of manufacture .. patentable.
*54* | DESIGN PATENTS. MPEP 1500
: DESIGN PATENTS. 1500
m1504.01 a Design patents. Computer generated icons. OK if shown on a computer screen (the required "article of manufacture")
m1504 ! Design patents. issue for| a= Ornament, impression, print, or picture applied to an article of manufacture. b= Shape or Configuration of an article of manufacture. c= Combination of a and b.
: DILIGENCE AND CONSTRUCTIVE REDUCTION TO PRACTICE. U102 CRtoP= describable in U112 terms. make, use, utility
m715.07 Diligence. Yes or No. no degrees of diligence.
u253 Disclaimer, disclaim a claim or portion of term.
m1490 Disclaimers
c1.56 Disclose, duty to disclose
c1.56 d Disclose, duty to disclose, by others
c1.56 c Disclose, duty to disclose, by whom
c1.56 a2 Disclose, duty to disclose, by whom, closest person (a2)
m1706 Disclosure Documents
: DISCLOSURE, IDS 1.97, 1.98, M609, 1418(Re-issue)
m716 ! Disclosure, Sufficiency of, to traverse rejection c1.132
m716.09 Disclosure, sufficiency of. m2164 - 2164.04 b
*40* | DIVISION RULES, REQUIREMENTS. 802, USC 121, CFR 1.141, 1.42
: DIVISION RULES, REQUIREMENTS. 802, USC 121, CFR 1.141, 1.42
*40* | DIVISION, EXAMINER REQUIRES. 802, USC 121, CFR 1.141, 1.42
m809.03 Division, linked claims, See also 818.03d
m809 Division, linked claims, See also 818.03d
m818.03 Division, linked claims, See also 818.03d
m818.03d ! Division, linked claims, traverse of linked claims
u121 Divisional Applications, two inventions in one application
*33.2* | DIVISIONAL APPLICATIONS, RULE 60, NO NEW MATTER M201.06 a 1.60 USC 121
u102 a, e, ! Do not have a 1 year free window.
m2186 ! Doctrine of Equivalents. same Function, Way, Result
m150 DOE, NASA statements to , c1.14
: DOUBLE PATENTING
m1504.05 3b Double patenting and restriction in design patents
: DOUBLE PATENTING IN RESTRICTION CASES
m804 Double Patenting, definition
m706.03 k Double patenting, duplicate claims
m804.01 Double Patenting, Nullification of rejection.
: DOUBLE PATENTING, OBVIOUSNESS TYPE
: DOUBLE PATENTING, SAME INVENTION TYPE
c1.84 Drawing standards
m1503.02 Drawing standards for Design Patents
c1.84 b Drawing standards. photographic submissions. m608.02
c1.81 Drawing, when required, late submission, u113
c1.81 c Drawing, when required, late submission, u113
c1.81 : DRAWINGS U113, 1.81a, 1.81c
: DRAWINGS AND RELATED 608.02, U112, 1.83
m608.02 i Drawings from prior applications. c1.88
m201.06 a ! Drawings in continuations c1.60
u113 : DRAWINGS U113, 1.81a, 1.81c
m608.02 Drawings, u113, c1.81, 1.84
*32.6* | DRAWINGS, AMENDMENT OF DRAWINGS 608.02
c1.83 Drawings, content of
m1413 Drawings, correction of patents c1.174
u113 Drawings, late submission
m608.02 k Drawings, transfer of drawings to Re-issue
: DUTIES OF REPRESENTATION
{ E
: EFFECTIVE DATE OF US PATENT IS ITS US FILING DATE U 102 e
: ELECTION / RESTRICTION DEFINED
: ELECTION / RESTRICTION PROCEDURE
*40* | ELECTION / RESTRICTION, EXAMINER REQUIRES. 802, USC 121, CFR 1.141, 1.42
m818 ! Election and Response
: ELECTION OF SPECIES, RESTRICTION ORDER
: ELECTION, CONSTRUCTIVE,
m818.03 b Election, Must elect even when rqmt is traversed c1.143
u103 ! Elements of COMBINED references may be obvious even though the specific structures CANNOT be specifically substituted into the structure of the OTHER reference.
m309 Employees of PTO, restriction on.
: EMPLOYMENT AND WITHDRAWAL FROM EMPLOYMENT 37CFR 10.36 - 10.40
m2164.03 Enablement and predictability.
m2164.08 Enablement is evaluated against claims. All claimed material should be enabled.
m2164.08 c Enablement, Critical feature not claimed.
m2164.05 b Enablement, determination. (a)=enabled as of filing date. (b)= Enabled to person(s) skilled in art (at filing)(may require two people skilled in different arts to work together as one.
m2164.07 Enablement, how to use disclosure.
c608.01p : ENABLEMENT, LACK OF 608.01p 706.02a m2106.01 a (in computer cases)
m2164.05 a Enablement. a = specification must be enabling as of the filing date. (b)= Enabled to person(s) skilled in art (at filing)(may require two people skilled in different arts to work together as one.
m2164.05 Enablement. a = specification must be enabling as of the filing date. (b)= Enabled to person(s) skilled in art (at filing)(may require two people skilled in different arts to work together as one.
m2164.01 a Enablement. Undue Experimentation factors. List of 8 factors.
m2121.04 Enabling Prior Art, what constitutes, in apparatus and articles.
m2121.02 Enabling Prior Art, what constitutes, in compounds and compositions.
m2186 ! Equivalents, Doctrine of,. same Function, Way, Result
*99* | ESSENTIAL MATERIAL == SEE ESSENTIAL MATTER IN DEFINITIONS BELOW.
m2172.01 Essential Matter, unclaimed. A claim that fails to include what has been described in the spec as essential matter, may be rejected under U112.
c10.20 ! Ethics see Misconduct.
c10. Ethics chapter
c10 : ETHICS CHAPTER 37CFR 10.
: ETHICS, ADVERTISING 37CFR 10.31 - 10.35
: ETHICS, ATTORNEY FEES 37CFR 10.36 - 10.37
: ETHICS, CLIENT RELATIONSHIPS 37CFR 10.56 - 10.93
: ETHICS, CODE OF, CANNONS 37CFR 10.20 -10.112
: ETHICS, DUTIES OF REPRESENTATION
: ETHICS, EMPLOYMENT AND WITHDRAWAL FROM EMPLOYMENT 37CFR 10.36 - 10.40
: ETHICS, FUNDS, CLIENT, HANDLING OF 37CFR 10.112
: ETHICS, IMPROPRIETY, APPEARANCE OF 37CFR 10.110 -10.111
: ETHICS, MISCONDUCT, 37CFR 1.23
: ETHICS, PARTNERSHIPS, LAW PRACTICES 37CFR 10.46 - 10.49
*47* | ETHICS, PRACTICE CFR 10--
: ETHICS, PRACTICE CFR 10--
: EX-PARTE QUAYLE, DEFINITION m714.14 only formal matters allowed. no more on merits
*64* | EX-PARTE QUAYLE, DEFINITION m714.14 only formal matters allowed. no more on merits
c1.109 Examination of applications, Reasons for allowance
: EXAMINATION, APPLICATION, ORDER OF, 1.101, 1.102, 708
m2189 Examinations of joint apps under u103, u116
c1.103 Examinations, suspension of examination. L 11 8
: EXAMINER'S ANSWER TO APPEAL 1208
m1702 ! Examiners, former, restrictions on
u102 c, d : EXAMPLE
u41 a1b ! Excess Claims, fees for. (a1b)
m608.03 ! Exhibits, Models, specimens
m2128.04 Experimental activity, testing.
m2133.03 e Experimental use permitted
c5.11 Export and foreign filing License
c5.11 e 1 Export and foreign filing License, not rqd for foreign made inventions
c5.12 Export and foreign filing license, Petition for license implied within filing of application.
: EXPORT LICENSE not needed after 6 mo.
c5.15 Export License, scope of,
: EXPRESS ABANDONMENT 1.138
c1.6, c1.10 : EXPRESS MAIL
m513 Express mail c1.10, c1.6
c1.78 ! Express mail filing, mailed on sat, sun, hol, filed on next working day.
c1.6 : EXPRESS MAIL MAILED ON SAT, SUN, HOL, EFFECTIVE DATE IS NEXT WORKING DATE.
c1.10 a Express mailing -(a)can do. -(b)how. -(c)Sat,Sun,Hol see c1.6a, u21a
c1.10 Express mailing -(a)can do. -(b)how. -(c)Sat,Sun,Hol see c1.6a, u21a
m711.01 Expressed or Formal abandonment. -01 c1.138
: EXTENSION DATE, HOLIDAY RULE
: EXTENSION DATE, HOLIDAY RULE DOESN'T WORK
c1.777 Extension of patent terms for medical devices.
: EXTENSION OF TIME (FAILURE TO RESPOND) 1.135
: EXTENSION OF TIME (PURCHASES) 1.135
m2265 ! Extension of Time to Respond in Re-examinations
c1.136 a2 Extension of time to respond, date of response is date when response, petition, and fee have been filed.
c1.136 b Extension of time to respond, not regular extensions. Sufficient cause required.
c1.136 a3 Extension of time to respond, Paying fee or authorizing deposit account is treated as a request for extension.
c1.136 a Extension of time to respond, timely response, for office actions. m710.02
c1.136 a,1,i Extension of time to respond, timely response, for office actions. m710.02
c1.136 Extension of time to respond, timely response, for office actions. m710.02
: EXTENSION, ISSUE FEE
*15.1* | Extensions of time to respond, list of ok/not ok
: Extensions of time to respond, list of ok/not ok
{ F
c1.15 ! F.O.I.A freedom of information act kay 19-33
c1.6 d3 Facsimile transmission. d= don't use list 9 items.
c1.6 d6 Facsimile transmission. d= don't use list 9 items.
m502.01 Facsimile transmissions. Do-not-use list
: FACSIMILE, FAX
c10.77 Fail to act competently
: FAX, FACSIMILE
c1.17 p Fee for late IDS
c1.18 Fee schedule - Certificate of mailing, applies
c1.18 a Fee schedule - issue fee. certificate of mailing applies.
c1.17 h Fee schedule for petitions to commissioner
c1.17 i Fee schedule for petitions to commissioner.
c1.17 Fee schedule for processing & Extensions
u041 a1 Fee structure. fee laws. 1a = filing fee.
u41 ! Fees
u41 c1.16-21! Fees $ c1.16-21
u041 a1B Fees for excess claims (a1b)
c10.36 b8 Fees for service flat/contingent (b8)
*44.2* | FEES REQUIRED / NOT REQUIRED, PARTIAL LIST OF, c1.136
: FEES, ATTORNEY, ETHICAL 37CFR 10.36 - 10.37
u041 e Fees, Commissioner may waive. No fees for Pat copies provided under u132 (rejection notices). (e)
*44.2* | FEES, for petitions and things. fee/nofee list.
u041 b Fees, maintenance, (b)
c1.16 Fees, National application filing
m509 Fees, payment of see for list of types
c1.20 e-j Fees, post issuance
c1.20 a Fees, post issuance, certificate of correction.
c1.20 e Fees, post issuance, maintenance (e)
c10.34 ! Fields of practice, advertising of, wording
c1.62 : FILE WRAPPER CONTINUATION, rule 62 new matter ok
*33.3* | FILE WRAPPER CONTINUATION, RULE 62, NEW MATTER OK M201.06 b 1.62
c1.62 File Wrapper continuations. Continuations in Part, Divisions, etc.
c1.59 Filed papers not returned.
c1.11 Files open to public (issue patent). m103
c1.11 a Files open to public (issue patent). m103
c1.11 b Files open to public (Reissue apps). m103
c1.11 c Files open to public (Rexam request published). m103
c1.11 e Files open to public. Files relating to interference proceeding. fee. m103
c1.11 d Files open to public. Files relating to reexamination proceedings. fee.
c1.6, c1.10 ! Filing by Express mail with certificate. filed when deposited in the US Mail
c1.78 ! Filing by Express mail, mailed on sat, sun, hol, filed on next working day.
c1.53 Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01
c1.53 b Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01
c1.53 d Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01
c1.53 d1 Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01
c1.53 e Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01
c1.53 c3 Filing date & application # (serial #). (a)= all filings receive an app #. (b)=Filing Date requires spec + one claim + drawing if reqd + Inventor(s). (a)(2)=provisionals. (c)=missing parts. (d)=missing fee or oath. , serial #, Completion of Application. (e)=not examined until complete. Provisionals never examined. expire in 12 mo. (f)=International apps designating the US is also the US filing date see PCT 11(3) except U103(e).. mpep 506, m601.01
c1.53 d2 Filing date & application # Provisional App. missing fee rules for action.
c1.53 f Filing date & application #. International app. Int App designating US is filed per art11(3) except 102(e).
u021 b Filing date & day for taking action. (a)= Commish makes the rules incl emergency situations and post office disruptions. (b)=The holiday rule. Sat, Sun, DC slacker day, next day ok. Note:except for provisional application expirations.
u111 b ! Filing date for provisional application. Express mailing - does this still provide date??????
u111 b ! Filing date for provisional application. Express mailing does not provide date??????
m1810 Filing date requirements. PCT treaty 11
C1.53 : FILING DATE, FORMAL RQMTS TO GET ONE, KEEP ONE 1.53
* 9* | FILING DATE, MINIMUM INFO FOR OBTAINING A FILING DATE: M 506 PG 500-5 CFR 1.53b
: FILING DATE, MINIMUM RQMTS FOR OBTAINING U111, 1.51, 1.52a
pct11 (13c) Filing Date, requirements to get one. page T-4
m608.01 a Filing date, requirements to obtain. Description, drawings, claim, inventors named.
m601.01 Filing date, requirements to obtain. Description, drawings, claim, inventors named. c1.53
m506.02 Filing date, Review of Refusal to Issue. Filing date when office receives spec, all inventors, drawings, claim for provisional and regular..
: FILING DATE, RQMTS TO GET APPLICATION FILED FOR EXAM.
c1.53 c Filing Date, serial #, Completion of Application mpep 506, m601.01
c1.53 b2 Filing Date, serial #, for Provisional App. b2= Spec per 112. Drawings, Inventors (alluvthem), cover sheet, mpep 506
* 9.1* | FILING DATE, TO OBTAIN AN EFFECTIVE [durable] FILING DATE:
c1.111 : FILING DATE, WITH MISSING RQD PARTS 1.111
: FILING DATES, CONTINUITY, AFFORDING DATES OF EARLIER APPLICS cfr 1.53, mpep 506, 201.06
*33* | FILING DATES, CONTINUITY, AFFORDING DATES OF EARLIER APPLICS cfr 1.53, mpep 506, 201.06
m601.01 a Filing non-provisional under u111(a) c1.53
* 8* | FILING OF OATH, DEFECTIVE OATH. 601.01 pg 600-5
* 8* | FILING OF OATH. 601.01 pg 600-5
m601.01 : FILING OF OATH. 601.01 pg 600-5 Original oath 602
m503 ! Filing Receipt, Serial Number c1.54
u154 a Filing, contents. a=general b=term extension c=continuation
m2271 ! Final Action in Re-examination
m2272 Final Action in Re-examination, actions after final action
: FINAL REJECTION 706.07 CFR 1.113, 1.116
*18* | FINAL REJECTION 706.07 CFR 1.113, 1.116
m706.07 b Final rejection on first action c1.113
*32.10* | FINAL REJECTION OR ACTION, AMENDMENT AFTER 714.12, 714.13 C1.116
m714.13 ! Final rejection or action, Amendment after, procedure followed.
*32.10* | FINAL REJECTION OR ACTION, RIGHT TO AMEND 714.12, 714.13 C1.116
c1.113 a Final Rejection or Action. Response must include cancellation of or repeal from the rejection of EACH rejected claim.
: FINAL REJECTION, APPEAL AFTER 1.191
m706.07 c Final Rejection, Premature. Raise before the primary examiner. Not advanceable as grounds for appeal or bias of complaint before the Board of Pat Appeals and Interferences.
: FINAL REJECTION, PROPER
m706.07 f Final Rejection, time for response
m706.07 f1 Final Rejection, time for response
m706.07 f8 Final Rejection, time for response, examiner's amendment
m707.07 f13 Final Rejection, time for response, interviews, no fee for
m706.07 d Final Rejection, Withdrawal of Premature.
m707.07 e Final Rejection, Withdrawal, General. New convincing facts presented. Amendments entered. New grounds require approval of supervisory primary examiner.
m140 Foreign filing license u184
c5.25 ! Foreign filing license, retroactive
: FOREIGN LICENSE, not needed after 6 mo
: FOREIGN PRIORITY U119, 1.55
c1.55 Foreign Priority, claim for
c1.55 a Foreign Priority, claim for
*41* | FOREIGN PRIORITY, ESTABLISHING. USC 119 , MPEP 201.13,-14,-15, CFR 1.55
: FOREIGN PRIORITY, ESTABLISHING. USC 119 , MPEP 201.13,-14,-15, CFR 1.55
u102 a,b ! Foreign Publication must be by printed media. Foreign sales not counted.
c1.77 : FORMAT OF SPECIFICATION 1.77
c1.52 ! Format, application.
c1.15 ! Freedom of Information Act, F.O.I.A. kay 19-33
c1.111 c Further Consideration -- Reply by applicant or owner.
c1.111 b,c Further Consideration -- Reply by applicant or owner.
c1.111 b Further Consideration -- Reply by applicant or owner.
c1.111 Further Consideration -- Reply by applicant or owner.
: FURTHER REVIEW OF APPEAL BOARD DECISIONS U141, 1.301 et seq
*33.3* | FWC CONTINUATION, RULE 62, NEW MATTER OK M201.06 b 1.62
{ G
m715.03 Genus-Species. where predictability is in question.
m2141 Graham Factual Inquiries.
*57.1* | GRAHAM VS JOHN DEERE CRITERIA: M 706,
m1002.20 c ! Group Director, acting for commissioner on petitions
* 1.2.1* | GROUPING OF DEPENDENT CLAIMS: c1.75(g)
*46* | GVT REGISTER OF INTEREST (MOSTLY FOR IMPOSING SECRECY ORDERS) CFR 7.XX
: GVT REGISTER OF INTEREST (MOSTLY FOR IMPOSING SECRECY ORDERS) CFR -->
{ H
: HEARING, ORAL, 1209
: HEARING, ORAL, REQUEST FOR, 1.194 b
: HOLIDAY RULE, APPLIES/DOES NOT APPLY
m710.05 ! Holidays, list of. Usual + ML King third Monday in Jan. 710.05
: HOW TO AMEND 1.121
{ I
m502 .. ! Identification of papers, list of rqmts
c1.97 : IDS 1.97, 1.98, M609. m1418(Re-issue)
m2004 IDS - aids to compliance with duty of disclosure
m2000 ! IDS - chapter on
m2001.06 IDS - sources of info. c1.56
m2002.01 IDS - who makes the disclosure. c1.56
c1.97 b3 IDS - File before mailing date of first office action on merits or whichever of (b)1-3) occurs last.
c1.97 IDS - Information Disclosure Statement m609
c1.97 c IDS - Information Disclosure Statement, after final action,allowance, FEE(c)
c1.98 IDS - Information Disclosure Statement, contents
c1.97 e IDS - Information Disclosure Statement, late entry, FEE (d),
c1.97 d 2 IDS - Information Disclosure Statement, late entry, FEE (d),
c1.97 b IDS - Information Disclosure Statement. b = requirements list. m609
m609 b1 IDS - Information Disclosure Statement. file before first office action or 3 mo from filing.
m609 b2 IDS - Information Disclosure Statement. May be filed before final action or notice of allowance mailed. (not on day of mailing)
m609 IDS - Information Disclosure Statement. page 600-697 c1.97
c1.97 d IDS - May be filed before or with issue fee. Include Cert, petition, fee.
m2001.04 IDS -- information under 1.56(a) No duty to disclose information not material to any claim.
m1418 IDS and other information
m2000 ! IDS. Chapter m2000 is all on IDS
*40.1* | IMPROPER REQUIREMENT FOR RESTRICTION
: IMPROPER RESTRICTION
m2125.04 In use or on sale, "in this country defined" u102b
m2127 In use or on sale, obviousness/anticipated rejection
m2126.01 In use, on sale, determination of when.
m2125 . ! In Use, On Sale, in the U.S. m2125.02
* 9* | INCOMPLETE SPECIFICATION
: INCORPORATION BY REFERENCE 608.01p
c1.97 : INFORMATION DISCLOSURE STATEMENT, IDS 1.97, 1.98, m609
u282 Infringements, presumption of patent validity, defenses.
m2112 Inherency, Rejections Based on,.
m716 ! Inoperability of reference to traverse rejection c1.132
m106 Inspection by applicant (inventor). Applicant can inspect unless assignee says no. Even so, if applicant can show why his inspection is necessary to preserve his rights and get access.
m104 Inspection of applications, when allowed
u135 Interference
c1.193 a2 Interference Appeals, Examiner's answer
c1.193 Interference Appeals, Examiner's answer
c1.193 a Interference Appeals, Examiner's answer
m2300-2303 Interference Proceedings
m2308.01 Interference with a patent. patent has earlier filing date.
m2304 Interference, applicant requests inter between apps
c1.607 Interference, request by applicant
c1.604 b Interference, request for
c1.637 c3 Interference. Content of motions. (c3)= prelim motion seeking to designate an app or patent claim to correspond to a count shall: ID the claim and count and show the claim defines the same patentable invention as another claim ... not disputed.
*31* | INTERLINEATION, ALTERATION. 605.04 pg 600-21 CFR 1.52c Revision by interlineation must be made before oath is signed. Each change is initialed and dated BY APPLICANT (before date of oath). See Preliminary Amendment L 11 2 L 15 7
: INTERLINEATION, ALTERATION. 605.04 pg 600-21 CFR 1.52c Revision by interlineation must be made before oath is signed. Each change is initialed and dated BY APPLICANT (before date of oath). See Preliminary Amendment L 11 2 L 15 7
c1.431 a International application requirements
c1.431 b,c International application requirements
pct T 11 International application, required parts.
pct11 International application, required parts.
pr04.9 International Apps. Designation of States (rule 4.9)
c1.432 c International Apps. Designation of states, payment of fees
m1805 International filing, where to.
c1.451 a International priority
c1.4 xx ! International Processing
: INTERNATIONAL PROCESSING. CFR 1.4XX US RECEIVING OFFICE US RESIDENTS ONLY. 1.412, 1.421
*61* | INTERNATIONAL PROCESSING. CFR 1.4XX US RECEIVING OFFICE US RESIDENTS ONLY. 1.412, 1.421
c1.412 a International, US as receiving office
c1.133 Interviews
c1.133 : INTERVIEWS 1.133
m707.07 f13 ! Interviews after final Rejection, within 6 mo, no fee
m713.09 Interviews after final rejection. One permitted, second is possible. Agenda in writing for disposal or clarification for appeal.
m713.04 Interviews made of record c1.133, c1.2
m713.02 Interviews prior to first office action
m713.01 Interviews, general policy c1.133
m713.05 Interviews, prohibited, granted, special situations.
u102 c ! Invention abandoned
m716.07 c ! Invention and Acts Must be in US, NAFTA, or WTO for date.
u102 f Invention by another, 102 f bar.
u102 g Invention by another, reduction to practice, diligence, not abandoned
: INVENTION DISCLOSURE PROGRAM. FEE $10. 1.21c, MPEP 1706
m2187 ! Invention, Ownership of, at time invention was made
*56.1* | INVENTIONS MADE ABROAD / NAFTA/WTO USC 104 .
u104 Inventions made abroad, military personnel exempted, NAFTA
: INVENTIONS STAGES
: INVENTIONS, PATENTABLE
m605.04 c Inventor changes name. Apply to Assistant Commish for Patents. Fee.
*26* | INVENTOR REFUSES TO SIGN. CFR 1.47 m409.03i
: INVENTOR REFUSES TO SIGN. CFR 1.47 m409.03i
m409.03 : INVENTOR UNAVAILABLE, preserve rights of. CFR 1.47 m409.03b
*25* | INVENTOR UNAVAILABLE. CFR 1.47 m409.03b
c1.42 Inventor, Death of inventor
: INVENTOR, DEATH OF,
u117 Inventor, Death or incapacity of Inventor
: INVENTOR, DELETION OF 1.48B
u118 Inventor, Filings by other than inventor
: INVENTOR, JOINT
m409.03 Inventor, unavailability of c1.47
: INVENTOR, WHO IS?
: INVENTORS, JOINT U 116, U 120
u116 Inventors, Joint, definitions
u116 ! Inventors, joint, definitions.
: INVENTORSHIP AND OWNERSHIP, COMPARED
c1.48 ! Inventorship, correction of m201.03, new oath, affidavit of no deception by original named inventors, fee, assignee's written consent
: INVENTORSHIP, CORRECTION OF, 1.48A, U116
m2137.01 Inventorship, defined for U102(f)
: INVENTORSHIP, TYPES
c1.314 Issuance of patent, (due course unless -- list) m1306.01
: ISSUE DATE BEGINS ...
: ISSUE FEE DETAILS
: ISSUE FEE, EXTENSION
c1.316 Issue fee, failure to pay abandons patent. (3 mo after notice of allowance). May be rectified.
c1.18 ! Issue fee, patent u154
m1306 Issue Fee. Due 3 mo after Notice of Allowance. Not extendible.
m1309 Issue of patent
u151 Issue of Patent, procedures, notice, etc 3 mo, fee, no ext except for cause (1.136b), petition for unavoidable delay, fee. S 21 8
: ISSUE OF PATENT, WITHDRAWAL FROM, 1.313
c3.81 Issue patent to assignee if assignment is made before issue fee paid.
{ J
c1.75e ! Jepson claim. Preamble of old art is implicit admission of prior art. 2173.05n
: JEPSON FORM OF CLAIM. Pressman 9-4, 9-20 CFR 1.75e
* 1.5* | JEPSON, definition and form C1.75(e)
m2189 ! Joint apps, examinations of, under u103,u116
m409.03 a Joint inventor unavailable. Prove unavailable or refuses (see 409.03 d) last known address of unavailable inventor must be supplied.
*52* | JOINT INVENTORS USC 262
u262 : JOINT INVENTORS USC 262
c1.45 Joint Inventors 605.07
c1.45 b Joint inventors 605.07
m605.07 Joint inventors 605=Applicant. -07=joint inventors. c1.45
u116 ! Joint inventors definitions
: JOINT INVENTORS AND INVENTORSHIP U116, U120
c1.47 b Joint inventors, reluctance of, u116
c1.47 Joint inventors, reluctance of, u116
u262 Joint owners, accountability, no need for.
{ K
{ L
m2107.01 bi Lack of Utility. (b)=statement of utility should be in spec. A statement of general utility not acceptable.
* 1.9* | LANGUAGE IN CLAIMS
c1.16 L Late Filing Surcharge for late filing of application fee, or cover sheet of provisional application.
: LICENSE FOR FOREIGN FILING. USC 184 NOT NEEDED 6 months AFTER filing in U.S. EXCEPT when under secrecy orders.
*60* | LICENSE FOR FOREIGN FILING. USC 184 NOT NEEDED 6 months AFTER filing in U.S. EXCEPT when under secrecy orders.
m2186 ! License is not Ownership pg 210.20
u184 License to file in foreign country see u185 also m140
: LICENSE, FOREIGN not needed after 6 mo.
c5.25 ! License, foreign filing, retractive
m714.19 List of amendments, for which entry is denied
u103 ! Long felt need for invention requires supporting evidence to succeed.
{ M
*22* | MAILING CERTIFICATES
c1.378 : MAINTENANCE FEE REFUSAL, PETITION FROM, 1.378
c1.362 Maintenance Fees
c1.12 : MAINTENANCE FEES CFR 1.21 U41(c)
* 5* | MAINTENANCE FEES CFR 1.21
c1.362 c4 Maintenance fees for Re-issue. use dates of original.
c1.362 b Maintenance fees, Design Patents, Plant Patents, (no fee required)
c1.362 d Maintenance fees, schedule of due dates
m2504 Maintenance fees. 4,8,12 yes after grant. None for plants and designs. c1.362
m708.02 : MAKE SPECIAL, 708.02, CFR 1.102 no fee for age, health, env quality, energy, super conductivity.
c1.102 Make special, advancement out of turn m708.02
c1.102 c,d Make special, advancement out of turn, why. list in m708.02
c1.102 d Make special, advancement out of turn, why. list in m708.02
c1.102 c Make special, advancement out of turn, why. list in m708.02
m708.02 : MAKE SPECIAL, PETITION TO MAKE SPECIAL, handling of, 708.02,
m708.02 Make Special, Petition to, (handling, expedite, national interest) c1.102 c1.412
*13* | MAKE SPECIAL. 708.02, CFR 1.102
c10.78 Malpractice, skip out on obligations of liabilities
m706.03 y ! Markush Format. -- selected from the group consisting of A & B. -- wherein M is A or B. Use CONSISTING OF, never use COMPRISING. m2173.05h for example of forms.
* 1.4* | MARKUSH GROUP AND FORMS 2173.05(h) 803.02
m706.03 y ! Markush Group. -- selected from the group consisting of A & B. -- wherein M is A or B. Use CONSISTING OF, never use COMPRISING. m2173.05h for example of forms.
m706.03 y Markush Group. m803.02
* 1.4.1* | MARKUSH PHRASING 2173.05(h) Use Consisting of, comprised of, NEVER comprising.
m803.02 Markush, rejection of 706.03y
m2106 ! Mathematical Algorithms, Computer programs
* 1.8* | MEANS PLUS FUNCTION
m2181 Means plus function claim described.
: MECHANICS OF PETITION FILING
* 1.6* | METHOD CLAIMS
: MINIMUM FOR APPLICATION. 506 PG 500-5 CFR 1.53b
* 9* | MINIMUM FOR APPLICATION. 506 PG 500-5 CFR 1.53b
* 9* | MINIMUM INFO FOR OBTAINING A FILING DATE: M 506 PG 500-5 CFR 1.53b
c1.21 h Misc fees
c10.23 b4 Misconduct, dishonesty, fraud, deceit, misrepresentation
c10.24 b Misconduct, Ethics, report non-privileged knowledge of,
c10.23 C16 Misconduct, Ethics, report non-privileged knowledge of,
c10.23 c2ii Misconduct, give or contribute to false info to Office
c10.23 c7 Misconduct, withholding info about copying claims (c7)
u114 Models and specimens
c1.91 ! Models not generally required. see also 1.92, 1.93, 1.94
m608.03 Models, exhibits, specimens
c1.94 Models, return of
c1.94 ! Models, specimens, return of
c1.92 ! Models, when required
m608.01 n : MULTIPLE DEPENDENT 608.01(n), pg 600-35. No MD from MD. MD claims in "alternative only" (or) form. 608.01n for form.
* 1.3* | MULTIPLE DEPENDENT CLAIM 608.01(n), No MD from MD. MD claims in "alternative only" (or) form. 608.01n for form.
: MULTIPLE DEPENDENT CLAIM COUNT (INCOMPLETE DESCRIPTION) 608.01A
* 3* | MULTIPLE DEPENDENT CLAIM COUNTING FOR FEES.
c1.75 c ! Multiple dependent claims m608 n
{ N
u104 ! NAFTA REVISION, U104 REPRINTED
*56.1* | NAFTA/WTO USC 104 INVENTIONS MADE ABROAD. minimum. m605.04b
c1.41 ! Name format in application. two full names minimum, one initial, minimum. m605.04b
m605 b : NAMES. Two Full names required 605b first, initial, last + inventors' address
*23* | NAMES. Two Full names required 605b first, int. last + inventors' address
c1.16 ! National Application filing FEES
u371 c National Stage filing, commencement. a= receipt from International Bureau of int app with amendments. Int search Rpt, INt prelim search rpt, prelim exam rpt, designating US.
u371 c2 National Stage filing, contents, copy of international filing
u371 c1 National Stage filing, contents, fee
u371 c4 National Stage filing, contents, oath
m1893 ! National Stage, PCT under u371
c1.495 b2 National Stage, entering US as an elected office. 30 mo time not extended.
c1.495 b National Stage, provide within 30 months International app, national fee, in English, Oath
m2173.05 i Negative Limitations in Claims. Not inherently ambiguous, often is. If recited negatives limitations are definite, claim is definite.
m608.04 New matter by preliminary amendment (at filing time)
m706.03 o New matter not allowed u132
m2163.06 New matter, u132 in apps. c1.118, u251 in reissues.
m2163.06 c New matter, at last a definition!!! u132, u251
: NEW MATTER, WHAT IS NOT,
: NEW MATTER, WHAT IS,
: NEW MATTER. CFR 1.118 MPEP 608.04, 608.04c, 608.01o, rule 60 201.06e, rule 62 201.06b 706.03o
*30* | NEW MATTER. CFR 1.118 MPEP 608.04, 608.04c, 608.01o, rule 60 201.06e, rule 62 201.06b 706.03o
m1834.01 No fax for International apps filed in US.
u102 a, e, ! No free 1 year window
m409.03 b No inventor available.
m2131.05 Non-Analogous Art anticipating a claim. Do not work for 102 rejections.
: NON-APPEALABLE, PETITION FROM NON-APPEALABLE DECISION BY EXAMINER (NO FEE) G 18 1
m706.03 a Non-statutory subject matter in application
c1.311 a Notice of Allowance of issue. time to send in fee.
c1.311 Notice of Allowance of issue. time to send in fee.
: NOTICE OF ALLOWANCE, WHAT NEXT? 1.311
*32.8* | NOTICE OF ALLOWANCE, AMENDMENT AFTER, 1.312 M714.14 M1303.01
*44.1* | NOTICE OF ALLOWANCE, ISSUE FEES. 3 Months to pay up. no extension cfr 1.87 Extensions allowed for submission of formal drawings, with ext fee.
: NOTICE OF ALLOWANCE, ISSUE FEES. 3 Months to pay up. no extension cfr 1.87 Extensions allowed for submission of formal drawings, with extension fee.
: NOTICE OF APPEAL MPEP 1205
c1.179 Notice of Re-issue application (inserted in original application file.
u132 Notice of rejection; Re-examination
: NOVELTY AND BARS , USC 102
*56* | NOVELTY AND BARS , USC 102
c1.821 ! Nucleotide/Amino Acid sequence c1.812 - 25
{ O
: OATH 602.++ Cannot be amended. 602.01 Substitute for original 602.02
*14.1* | OATH 602.++ Cannot be amended. 602.01 Substitute for original 602.02
m605.04 b Oath by all the inventors, facsimile copies filed. pg 600-21
m605.04 Oath by all the inventors, facsimile copies filed. pg 600-21
m602.01 Oath cannot be amended
u115 Oath of Applicant mpep 602
* 8* | OATH OR DECLARATION
c1.63 Oath or Declaration, contents of,
m602 Oath or Declaration, original u25, 26, 115, c1.63, 1.68
: OATH, BY WHOM, ALTERNATIVE SIGNATURES 1.42, 1.43, 1.47
c1.63 : OATH, CONTENT OF 1.63
m602.05 Oath, date of execution, lapsed, too old. 3 mo.
m602.03 Oath, defective
m601.01 : OATH, FILING
m602 : OATH, FILING OF, MPEP 602++
* 8* | OATH, FILING or DEFECTIVE 602.++ Cannot be amended. 602.01 Substitute for original 602.02 pg 600-5
m602.02 Oath, new or substitute
m602 : OATH, ORIGINAL
: OATH, SMALL ENTITY 1.27
c1.67 b Oath, supplemental, required
c1.132 Objections to rejections, petitions, affidavits m716
m706.01 : OBJECTIONS VS REJECTIONS m706.01
*58* | OBJECTIONS VS REJECTIONS m706.01
*57* | OBVIOUSNESS Functional equivalents not necessarily obvious in view of one-another. pg 700-9 USC 103
u103 : OBVIOUSNESS Functional equivalents not necessarily obvious in view of one-another. pg 700-9 USC 103
u103 ! Obviousness evaluation criteria (GRAHAM vs JOHN DEERE) m706 PRC 5-54
u103 ! Obviousness evaluation criteria (GRAHAM vs JOHN DEERE) m706 PRG 5-54
m2144.05 Obviousness of Ranges. (a)= No overlapping with Prior Art (includes near overlap if obv to skilled artisan) (prima facie obv.) . see 2131.03 for examples. (b)=various concentrations or temps usually obvious, unless shown critical to claim. Optimization of P.Art not patentable.
m706.02 j,k ! Obviousness rejections
m2143 Obviousness, Prima Facie. Criteria = Prior art must make suggestion of motivation + reasonable expectation of success + reference(s) must teach or suggest ALL the limitations.
m2142 Obviousness, Prima facie. Examiner bears the initial burden of factually supporting a prima facie conclusion of obviousness.
: OBVIOUSNESS, ARGUMENTS AGAINST,
: OBVIOUSNESS, DOUBLE PATENTING, AFFIDAVITS AGAINST
m2144.04 Obviousness, legal precedence. u103
: OBVIOUSNESS, SECONDARY CONSIDERATIONS (ARGS FOR OA) U103, 700.84
*57.2* | OBVIOUSNESS, SECONDARY CONSIDERATIONS TO REBUT: U103 mpep 716
*32.7* | OFFICE ACTION, RESPONSE BY APPLICANT TO, (REMARKS SECTION) CFR 1.111
: OFFICE ACTION, RESPONSE TO 1.111
u042 d Office funding, fees. Commish may refund (d)
m1002.02 a ! Office of special programs, acting for commissioner on petitions
m505 Office Receipt Stamp. & holiday rule. c1.10
m1096 Og 39 (ain't no such m1096)
m1105 Og 68 (m1100 is now m2300, interference proceedings)
u103 ! Omission of an element while retaining its function suggests un-obviousness.
m2125.03 On sale in the U.S.
: ON SALE" IN THE US U 102b
m2125 .. ! On Sale, In Use, in the U.S. m2125.02
u102 a, e, ! One year Free window, none for 102a, e
m716 ! Operability of applicant's disclosure, traversing rejection c1.132 S 12 14
: ORAL HEARING 1209
m1209 Oral Hearings in Appeal cases. fee. One month; 3mo if new grounds of rejection. 20 min for applic. 15 min for examiner. c1.194
c1.194 Oral Hearings in Appeal cases. fee. One month; 3mo if new grounds of rejection. 20 min for applic. 15 min for examiner. m1209
m2276 Oral Hearings in Reexamination cases. fee. One month.
: ORDER OF EXAMINATION OF APPLICATION 1.101, 1.102, 708
m708 Order of examinations (priority) c1.101
: OVERCOMING SUBSTANCE OF REFERENCE
: OWNERSHIP / ASSIGNMENT 3.11, 3.21, 3.24, 3.26-28, 3.31
: OWNERSHIP AND INVENTORSHIP, COMPARED
m2187 Ownership at time invention was made
m2188 Ownership at time of invention, establishing
{ P
m502 . ! Papers, Identification, list of rqmts.
m201.04 Parent Application defined. Provisionals not a "parent"
: PATENT APPL, WHO CAN FILE
: PATENT APPL, WHO CAN PROSECUTE, & DUTIES
u111 a Patent Application, regular, required contents of, filing date
m2127 a Patent Apps as Prior Art. (a)=abandoned apps P.Art only if disclosed to public. (b)=Canceled matter. Rejection cannot rely on canceled matter cuz not in issued patent (made public).
*52* | PATENT AS PERSONAL PROPERTY
u041 a Patent Fees
c1.18 b Patent Issue Fees. deposit account OK
m1309.01 Patent term and extensions. 20 years from earliest priority. Extensions for delays. 5 years max.
u102 Patentability, reasons for not being patentable.
m2106 Patentability, computer programs, algorithms, best mode
: PATENTABLE INVENTIONS
u101 Patentable Inventions, definition
: PATENTABLE SUBJECT MATTER
u102 a,b,d : PATENTED" DEFINITIONS
m2133.02 ! Patents and publications, rejections based on
pct a14 ! PCT defective application. list of defects
m1893.01 b1 PCT 30 months to enter submissions. c1.495b
m1800 ! PCT chapter
pct30 PCT Confidentiality, PCT art 30. m110
m1893.01 ! PCT Entry via the US Patent Office
pct ! PCT index to regs. page t-21
m1893 ! PCT National Stage under u371
pr04.10 b PCT priority claim. Rule 4.10
m1893.03 c PCT priority date, claim for US National Stage ape.
pct a11 ! PCT Requirements, Filing date. m1810 a11 page t-4
m1800 ++ ! PCT stuff Section 18 Basic Principles 1801 Receiving Office 1801, CFR 1.4xx for US, 1805 (who) Application, contents 1815, details, 1820 --
*62* | PCT stuff Section 18 Basic Principles 1801 Receiving Office CFR 1.4xx for US, 1815 (who) application, contents 1815, details, 1820 -- W 26 7,8
c10.40 c1 Permissive withdrawal from case
: PETITION / APPEAL DEFINITIONS, USES
: PETITION / APPEAL GENERAL INFO
: PETITION / APPEAL LIST
: PETITION / APPEAL TIMING
*58* | PETITION / APPEAL / REQUEST, DISTINCTIONS BETWEEN
: PETITION FILING, MECHANICS OF,
: PETITION FOR A PUBLIC USE PROCEEDING 1.292
c10.160 Petition for reinstatement. suspended attorney. requirements for petition.
: PETITION FROM A REFUSAL TO ACCEPT MAINTENANCE FEE. 1.378
: PETITION FROM NON-APPEALABLE DECIS BY EXAMINER (NO FEE)
c1.127 Petition from refusal to admit an amendment
m1002 Petition to Commissioner and delegations of authority by commissioner. c1.181
c1.181 ! Petition to commissioner to exercise supervisory authority 2 mo time
m1002.02 c Petition to Commissioner, delegation of authority to Group director.
m1002.02 c4b Petition to Commissioner, delegation of authority to Group director.
m1002.02 Petition to Commissioner, delegation of authority to Group director.
m1002.02 a Petition to Commissioner, delegation of authority to Office of special programs.
m1002.02 c4c Petition to Commissioner, Delegation to Group Director, . holding of abandonment (c4c)
c1.181 f Petition to commissioner. timeliness(f)
: PETITION TO MAKE SPECIAL (SOMETIME NO FEE)
: PETITION TO REVIVE
: PETITION TO WITHDRAW HOLDING (NO FEE)
: PETITIONS, normal period to file, FEES REQUIRED / NOT REQUIRED
*44.2* | PETITIONS, normal period to file, FEES REQUIRED / NOT REQUIRED
c1.165 Plant drawings
c1.162 Plant patent
u161 Plant patent
c1.164 Plant Patent Claims
c1.163 Plant Patent Specification
u162 Plant Patent, description, claim
m1603 Plant Patent, Elements of appl.
m1601 Plant Patent, law, scope, type of plants covered.
m1604 Plant Patent, Oath
m1600 ! Plant Patents, chapter on
m1605 Plant patents, claims and specification.
c1.166 Plant specimens
m1607 Plant specimens. do not submit unless asked by examiner.
c1.26 Post Issuance Fees, when
*7.1* | POSTCARD RECEIPT 503
m402.10 Power of attorney, changing, all inventors must agree.
m405 Power of attorney, not of record. OK for filing papers. not OK for interviews, release of info. c1.134
m402 Power of attorney, of record and not of record c1.34
m402.07 Power of attorney, revocation by assignee. c1.36, c3.71
m402.05 Power of attorney, revocation. c1.36
m2138.05 : PRACTICE, REDUCTION TO CRtoP= describable in U112 terms. make, use, utility ARtoP = working & tested model containing every claim element, have utility, not necessarily ready for market.
c10.160 ! Practice, reinstatement
c10.158 ! Practice, suspension from
c1.115 : PRELIMINARY AMENDMENT. 506, 714.10, 717.04, 608.04b New Matter. 608.04b must be made before oath signed. refer to pre amend in oath when it is finally signed.
*31* | PRELIMINARY AMENDMENT. 506, 714.10, 717.04, 608.04b New Matter. 608.04b must be made before oath signed. refer to pre amend in oath when it is finally signed.
c10.57 Preservation of confidences and secrets of client. a= definitions. b= list of dont's. c= list of can do's. d= reasonable care.
u102 d Prior art by patent or inventor's certificate.
u102 b Prior art by printed publication or in public use more than 1 year.
m2217 ! Prior art in Re-examination u302
! Prior art in Re-Issues
m2143.01 Prior Art must suggest desirability of presently claimed invention to be prior art.
m2153 Prior art under 102e
m2126 Prior art, "a patent, foreign, or secret". rqmts for being published.
m718 Prior art, commonly owned patent, Affidavit to overcome.
m716.10 Prior art, same inventor or common inventor in joint apps (examples provided)
m2138.03 Prior art, abandoned, suppressed or concealed ref. u102g
m2131 Prior art, anticipation. 102abe rejections. To anticipate, ref must teach every element of claim.
m2202 Prior art, citation of in re-examinations c1.501, u301
u301 Prior Art, citation of, in re-examination m2202, c1.501
m2144.06 Prior art, combining equivalent prior art known for the same purpose.
m2122 Prior Art, Discussion of Utility in, . Utility need not be disclosed in reference.
m2125 Prior Art, Drawings as, . If they are clearly shown. Proportions shown are not are not evidence of actual proportions.
m2132 Prior art, known or used. "in this country" "by others" "patented in this or foreign country" USC 102a,
u102 a Prior Art, Known, used, patented, before invention in US
m2128.01 Prior art, level of public accessibility rqd. rqmts for being "published".
m2131.01 Prior art, multiple references. 102 rejections.
m2136 Prior art, Pats and SIR and applications in the US only. Defensive pubs not patents. effective at pub date only. u102e
m2133.03 d Prior art, Public Use or On Sale. d = "in this country" Sale or offer to sell originating in the US only.
m2132.01 Prior art, Publications. u102a
m2138.05 Prior art, reduction to practice. Actual or constructive. Constructive requires sufficient disclosure of "how to use and how to make"
m706.02 Prior Art, Rejection on. U102, u103, m2186
m2146 Prior art. "By another" common ownership overcomes. u103(c) U102(f), u102(g)
m2143.02 Prior Art. Obviousness requires only a reasonable expectation of success.
u102 e Prior patent issued
m1893.03 c ! Priority date, PCT claim for US National Stage app.
u365 b Priority, benefit of, International Stage, u119
c1.78 a3 Priority, claiming benefit of earlier filed provisional apps. PPA's can expire on S,S,Hol. PPA must name at least one inventor of non-prov app.
c1.78 a2 Priority, claiming benefit. Priority reference apps must be in first sentence. Co-pending
pct08(2)a Priority, PCT apps. within 12 mo of filing US app.
u119 d Priority. Inventor's certificate.
u119 b Priority. Must claim and provide a Certified copy. Other requirements.
m2112.02 Process Claims
* 1.7* | PRODUCT BY PROCESS 706.03(e) 805.05 e, f, & g
m706.03 e Product by process. Old product, new process of mfg. OK
: PROPER FINAL REJECTIONS
: PROPER RESTRICTION
*52* | PROPERTY, A PATENT AS PERSONAL PROPERTY
m409.01 a Prosecution by Administrator or Executor u117, c1.42
m1901.03 Protest, how submitted, contents, completeness
m1901.02 Protest, Information which can be relied upon in a protest
m1895.01 Protest, who can protest
m1901.01 Protest, who can protest
c1.291 a Protests by Public against pending applications
c1.291 Protests by Public against pending applications
: PROTESTS, THIRD PARTY 1.291
u111 b4 Provisional app filing date. b4=prov. app filing date issued when Spec and drawing received by PTO. This if for filing date, not necessarily an effective filing.
u111 b ! Provisional App, required contents of, filing date
* 9.2* | PROVISIONAL APPLICATION: U111
c1.78 ! Provisional Apps expire on date, even on Sat, Sun, Hol
u111 b7 Provisional apps have no right of priority from earlier filings.
m201.04 b Provisional Apps. 12 month. Expire on Sat,Sun,Hol No grace. Provisionals do not count in 20 year term.
u102e,702.06! Provisional Rejection (obviousness) under 102e. m702.06 pg 700-9
*57.4* | PROVISIONAL REJECTION: USC 102(e)/103 mpep 706.02. pg 700-8, 700-9
: PTO FILES, ACCESS TO U122
: PTO FILES, SECRET U122
*53* | PUBLIC ACCESS TO RECORDS. OPEN/CLOSED LIST.
m103 Public Files. c1.11 Applics not public, some abandoned are. c1.14
m102 ! Public information about applications
: PUBLIC USE PROCEEDING, PETITION FOR A PUBLIC USE PROCEEDING
m2133.02 ! Publications and patents, rejections based on
{ Q
*64* | QUAYLE DEFINITION m714.14 only formal matters left. no more on merits
m714.14 : QUAYLE DEFINITION m714.14 only formal matters left. no more on merits
: QUESTION REVIEW (COURSE NOTES)
: QUESTION REVIEW (COURSE NOTES, DATE MATTERS)
: QUESTION REVIEW (COURSE NOTES, INVENTORSHIP)
: QUESTION REVIEW (COURSE NOTES, PETITIONS)
c1.182 Questions not specifically provide for (in the rules?). Commissioner decides on merits. FEE RQD 1.17h
c10.40 a ! Quit employment, cannot except for ---
{ R
m2131.04 Ranges, Anticipation.
m2131.03 Ranges, Anticipation.
c1.520 Re-examination at initiative of commissioner
m2239 Re-examination ordered by Commish's initiative.
u304 Re-examination ordered by Commissioner
m2250 Re-examination, Amendment by patent owner c1.121
m2150 Re-examination, Amendment by patent owner c1.121
m2234 Re-examination, Amendment, entry of. Bracket and underline method only. No new matter, no enlargement of scope. c1.121
c1.501 Re-examination, Citations of Prior Art, Re-examination, during life of patent
m2243 Re-examination, Claims considered in deciding request for Re-ex.
c1.550 c Re-examination, conduct of,
m2242 Re-examination, criteria for deciding request.
c1.1550 c Re-examination, extensions of time m2265
m2271 Re-examination, Final Action
c1.58 a Re-examination, interviews
c1.560 Re-examination, interviews
c1.530 d Re-examination, no enlargement, no new matter. no amendment to expired patent.
m2249 Re-examination, patent owner's statement c1.530
m2212 Re-examination, persons who may file a request. u302, c1.510a
m2249 ! Re-examination, proof of service of response to pt owner's statement
c1.535 Re-examination, reply by requester to owner's statement.
m2251 Re-examination, Reply by requester. c1.535
c1.515 c Re-examination, req 3 mo. reply 1 mo. all claims re-examined.
c1.515 Re-examination, req 3 mo. reply 1 mo. all claims re-examined.
m2247 Re-examination, request denied
u302 Re-examination, request for
c1.510 e Re-examination, request for, required parts (b). May include proposed amendments (e)
c1.510 b Re-examination, request for, required parts (b). May include proposed amendments (e)
c1.510 a Re-examination, request for, who (a), when(a), parts(b), FEE (c), date(d), amendments (e), Atty(f)
c1.510 Re-examination, request for, who (a), when(a), parts(b), FEE (c), date(d), amendments (e), Atty(f)
m2210 Re-examination, request for. u302, c1.510
m2214 Re-examination, Request, contents. c1.510
c1.552 b Re-examination, Scope of. Examined considering patents, printed pubs, u112, & new matter only. no new matter. m2258
m2217 Re-examination, statement of prior art u302
c1.530 Re-examination, Statement, Amendment by owner.
m2265 ! Re-examination, time to respond, extensions of,
*20.2* | RE-EXAMINATIONS 2265, 2209, [2215,2233(fees, list)] RE-EXAMINATION is not an "application" thus 1.136 does not apply (2265)
: RE-EXAMINATIONS 2265, 2209, [2215,2233(fees, list)] RE-EXAMINATION is not an "application" thus 1.136 does not apply (2265)
*20.2* | RE-EXAMINATIONS, AMENDMENT FORMS FOR.
m2265 ! Re-examinations, Extension of Time to Respond in
*20* | RE-ISSUE & RE-EXAMINATION. AMENDMENTS, DIFFERENT RULES FOR THEM. USC 251, 1401, 1416, 1.171-1.179
m1410 Re-issue application, contents of. Re-issue oath rqd. ok to file oath or fee late,
m1445 Re-issue Apps Examined in Same Manner as Original Apps. Subject to any and all rejections. c1,176
m1430 Re-issue files open to public. Notice of filing in Gazette.
c1.177 Re-issue in divisions
c1.175 Re-issue oath or declaration Pages 600-658
u251 Re-issue of defective patents u1401, u1402 (list)
m1453 Re-issue, amendments to Re-issue appl. Pages 1400-1421
c1.171 Re-issue, Application, title report, surrender offer, fee
m1411.02 Re-issue, claims must be for same general invention
m1412.02 Re-issue, claims must be for same general invention
m1403 Re-issue, Diligence in filing
c1.174 Re-issue, drawings. 608.02k Transfer if no change. New Set rqd if any dwg needs change.
c1.176 Re-issue, examination of,
m1440 Re-issue, examined in same manner as original applications c1.176
m1402 Re-issue, grounds for filing 1= claims too narrow or broad, 2 year window for enlargment. By assignee of whole interest if not enlarging. 2= to correct inaccuracies in disclosure, 3= to claim foreign priority, 4= to make or correct reference to prior co-pending apps.
m1410.01 Re-issue, oath, assent of all assignees. c1.172
c1.178 Re-issue, original patent surrendered
m1401 Re-issue, requirements to file. error & no deception, surrender patent, fee. no new matter. for invention as disclosed in original patent, for unexpired portion of term. may be divided into several re-issues. 2 year window for enlargement of scope of claims. By assignee of whole interest if not enlarging.
c1.172 Re-issue, who signs, who owns.
: RE-ISSUE. USC 251, 1401, 1416, 1.171-1.179
m1410 ! Re-issues, all about -- m1410
m1302.14 Reasons for allowance
c1.109 ! Reasons for allowance, Examination of applications
c1.6 Receipt of letters and papers, handling by PTO, Official dating. a= Express mail filed next day not on Sat, Sun, Hol. (1.6 a2) b= post office pouch. c= hand delivered. d= fax e= postoffice interruptions.
c1.6 a2 Receipt of letters and papers, handling by PTO, Official dating. a= Express mail filed next day not on Sat, Sun, Hol. (1.6 a2) b= post office pouch. c= hand delivered. d= fax e= postoffice interruptions.
c1.6 a3 Receipt of letters and papers, handling by PTO, Official dating. a= Express mail filed next day not on Sat, Sun, Hol. (1.6 a2) b= post office pouch. c= hand delivered. d= fax e= postoffice interruptions.
*7.1* | RECEIPT, RETURN POSTCARD 503
: RECORDING AND ASSIGNMENT, REQUIRED DATA, C3.21
m2138.05 : REDUCTION TO PRACTICE CRtoP= describable in U112 terms. make, use, utility. ARtoP = working & tested model containing every claim element, have utility, not necessarily ready for market.
: REDUCTION TO PRACTICE & DILIGENCE. U102 CRtoP= describable in U112 terms. make, use, utility. ARtoP = working & tested model containing every claim element, have utility, not necessarily ready for market.
: REDUCTION TO PRACTICE, AFFIDAVITS FOR
: REEXAMINATION 2265, 2209, [2215,2233(fees, list)] RE-EXAMINATION is not an "application" thus 1.136 does not apply (2265)
u305 Reexamination, conduct of proceedings. No claim enlarging scope of patent permitted.
m2249 ! Reexamination, proof of service of response to pt owner's statement
m2258 Reexamination, scope of. Examined considering patents, printed pubs, u112, & new matter only. no new matter. c1.552
c1.552 Reexamination, scope of. Examined considering patents, printed pubs, u112, & new matter only. no new matter. m2258
m2265 ! Reexamination, time to respond, extensions of,
*20.2* | REEXAMINATIONS, AMENDMENT FORMS FOR.
m2265 ! Reexaminations, Extension of Time to Respond in
m715.01 b Reference patents have common assignee.
: REFERENCE, DATE OF FOREIGN PATENT DOC. AS,
: REFERENCE, INCORPORATION BY REFERENCE 608.01p
: REFERENCE, OVERCOMING SUBSTANCE OF,
m715.01 c Reference, publications of applicants own invention.
: REFERENCE, USE OF, DATES, ENABLEMENT,
: REFERENCE, WHAT IS ONE?
*57.3* | REFERENCES, COMBINED, OBVIOUSNESS, 103:
m402.01 ! Registration, Exceptions for limited practice.
c10.158 ! Registration, suspension from
c1.172 a Reissue, who signs, who owns.
: REISSUE. USC 251, 1401, 1416, 1.171-1.179
*20* | REISSUES & RE-EXAMINATIONS, DIFFERENT RULES FOR AMENDMENT, 1.121e,f
*20.1* | REISSUES, AMENDMENT FORMS.
m1410 ! Reissues, all about -- m1410
m706.03 u Rejection by disclaimer (??). applicant fails to: a= make suggested claims for interference. b= copy claim when suggested. c= timely respond to appeal.
m706.01 Rejection Contrasted with Objections (706=rejection of claims) *63*
m706.03 Rejection not based on Prior Art
m706 Rejection of Claims c1.106
c1.107 b Rejection of claims. b = examiner's personal knowledge
m706.02 b Rejection on prior Art, U102(b) (e), Printed publication or patent. (list of overcoming arguments)
m706.02 k Rejection on Prior Art. Provisional rejection. k = Obviousness.
m706.03 d Rejection under u112, second paragraph. go to m2171 - m2174. u112
: REJECTION, FINAL c1.113, 1.116
m707.07 f13 ! Rejection, final, interviews ok within 6 mo, no fee
u102e,702.06! Rejection, Provisional, (obviousness) under 102e. m702.06 pg 700-9
*57.4* | REJECTION, PROVISIONAL: USC 102(e)/103 mpep 706.02. pg 700-8, 700-9
m2145 Rejection. Rebuttal Arguments. Arguments no good. Evidence required. Details shown.
m2133.02 Rejections based on publications and patents
m2133.01 Rejections of CIP applications
m2136.03 Rejections under U102(c) Reference Date, Critical. in U102(c) cases. (foreign references)
m2135.01 Rejections under U102(d). The 4 requirements of 102(d) detailed
m2135 Rejections under U102(d). The 4 requirements of 102(d) listed
m2136.05 Rejections under U102(e) Applicant's own work overcomes 102(e)
m2136.04 Rejections under U102(e) Inventors, Different. "by another" definition.
m706.02 L Rejections under u102(f) u102(g) u103, u103(c) c1.106
m2137 Rejections under U102(f). Applicant is not the inventor.
m706.02 f ! Rejections under u102e
m706.02 j ! Rejections under u103 under 103, 102/103
m706.01 : REJECTIONS VS OBJECTIONS m706.01
*58* | REJECTIONS VS OBJECTIONS m706.01
m706.02 c Rejections, Common ownership, establishing
m2144 Rejections, Sources of Rational Supporting a Rejection Under u103.
m716 ! Rejections, Traversing c1.132 S 12 14
m706.02 a Rejections, Well known prior art u102, u103 m2186 c1.107
*32.7* | REMARKS SECTION, RESPONSE BY APPLICANT TO OFFICE ACTION CFR 1.111
c10.11 ! Removal from Roster of Agents/atty.
m1208.03 Reply Brief in Appeal. Directed only at new points of argument c1.193
: REPLY TO EXAMINER'S ANSWER TO APPEAL 1208.03
c1.111 : REPLY TO OFFICE ACTION
: REPRESENTATION MPEP SECTION 4
*50* | REPRESENTATION MPEP SECTION 4
: REPRESENTATION, DUTIES
c1.35 a Representation, recognition for
c1.34 a Representation, recognition for
c1.34 Representation, recognition for
c1.31 Represented by Attorney or Agent
c1.31 a Represented by Attorney or Agent
*58* | REQUEST / PETITION / APPEAL, DISTINCTIONS BETWEEN
: REQUEST FOR ORAL HEARING 1.194 b
: REQUEST FOR RECONSIDERATION OF APPEAL 1.197 b NO FEE
m2248 Request, petition from denial of c1.515
*40.1* | REQUIREMENT FOR RESTRICTION, IMPROPER
*40* | REQUIREMENT TO DIVIDE, BY EXAMINER. 802, USC 121, CFR 1.141, 1.42
: REQUIREMENTS OF RESPONSE TO OFFICE ACTION, 1.111
pct a11 ! Requirements, PCT, Filing date. m1810 a11 page t-4
: RES JUDICIA 706.03(W)
: RESPONSE AFTER NOTICE OF ALLOWANCE 1.109
*32.7* | RESPONSE BY APPLICANT TO OFFICE ACTION (REMARKS SECTION) CFR 1.111
*32.2* | RESPONSE BY APPLICANT TO OFFICE ACTION (REMARKS SECTION) CFR 1.111
: RESPONSE BY APPLICANT TO OFFICE ACTION (REMARKS SECTION) CFR 1.111
: RESPONSE PERIODS NORMALLY APPLIED
: RESPONSE TO ALLOWANCE 1.111
: RESPONSE TO OFFICE ACTION IN PAT APPLICATIONS, RE-EX c1.111
m710 Response, period for,
m818 ! Responses to rqmts for election.
m608.01 s ! Restoration of canceled matter. by new insertion only
: RESTRICTION / ELECTION DEFINED
: RESTRICTION / ELECTION PROCEDURE
*40* | RESTRICTION / ELECTION, EXAMINER REQUIRES. 802, USC 121, CFR 1.141, 1.42
: RESTRICTION CASES, DOUBLE PATENTING
: RESTRICTION IS NOT PROPER 806.05F
: RESTRICTION IS PROPER
: RESTRICTION ORDER, ELECTION OF SPECIES,
m803 ! Restriction, when proper
*40.1* | RESTRICTION, IMPROPER REQUIREMENT FOR RESTRICTION
m818.03 e Restriction, Must traverse to preserve right of petition.
c1.144 Restriction, petition from requirement of, No Fee
c1.143 Restriction, reconsideration of requirement. No Fee.
m1702 Restrictions on former examiners
u004 Restrictions on PTO employees
m802 Restrictions, Divisions U121, c1.141
*19* | RESTRICTIONS. MPEP SECTION 8
: RESTRICTIONS. MPEP SECTION 8
c5.25 ! Retroactive foreign filing license
c1.94 ! Return of models and specimens
*7.1* | RETURN POSTCARD RECEIPT 503
: REVIVAL 1.137A, 1.137B
c1.137 b Revival of Abandoned App. (a)=unavoidable -- file a proposed response + fee c1.17(L) + showing of unavoidability. (b)= unintentional -- same stuff. (c)= if more than 6 mo. then terminal disclaimer equal to abandoned period + fee c1.321 TD rqd on subsequent continuations. (d)= request for reconsideration of refusal to revive, 2 month period or as set. (e)= Not extendible, except (b) and (d) per c1.136 (the normal extension rules).
c1.139 b Revival of Provisional App. still 12 mo max life of ppa
: REVIVAL, PETITION TO REVIVE
m201.13 Right of priority of Foreign Applications. U 119
u172 Right of Priority, Design patents. 6 mo for u119(d) ; 0 for u119(e)
m201.15 Right of priority. Overcoming references.
*32.10* | RIGHT TO AMEND AFTER FINAL REJECTION OR ACTION 714.12, 714.13 C1.116
m106.01 Rights of Assignee of Part Interest. Part interest gets right to inspect.
m409.03 i Rights of non-signing inventor. 409.03=Unavailability of Inventor
c10.11 Roster of Agents/Atty. Removal from
u112 : RQMTS, FOREIGN LICENSE
*33.1* | RULE 60 CONTINUATIONS, NO NEW MATTER C1.16 M201.07
*33.2* | RULE 60 DIVISIONAL APPLICATIONS, NO NEW MATTER M201.06 a 1.60 USC 121
c1.60 : RULE 60, CONTINUATION OF PRIOR APP. no new matter
*33.4* | RULE 62 CIP, NEW MATTER OK M201.08
*33.3* | RULE 62 FWC CONTINUATION, NEW MATTER OK M201.06 b 1.62
c1.62 : RULE 62, FILE WRAPPER CONTINUATION new matter ok
{ S
m2125.04 ! Sale or Use, "in this country defined" u102b
m2126.01 ! Sale or Use, determination of when.
m715.05 Same Invention. commonly owned. 1 year publication limit applies. Remedy is via c1.608, not c1.131
m410 Search, no requirement to make one relative to filing an application.
: SECONDARY CONSIDERATIONS (GRAHAM CRITERIA) m706, pg 700-6
*57.2* | SECONDARY CONSIDERATIONS TO REBUT 103 OBVIOUSNESS: mpep 716
: SECONDARY CONSIDERATIONS, OBVIOUSNESS (ARGS FOR OA) U103, 700.84
m130 Secrecy order cases, examination of.
*45* | SECRECY ORDERS CFR 5-- MPEP 120 u182
c5.5 a Secrecy Orders, Permit to disclose or modification of secrecy order. u182
c5.3 Secrecy Orders, Prosecution of application while under secrecy orders. m120
: SECRECY ORDERS, RECISION OF CFR 5.4 M120
m120 Secrecy orders.
: SECRECY ORDERS. CFR 5.1 - 5.8 CFR 5.1, 5.2, 5.3, M120
m101 Secrecy, National security, foreign filing
: SECRECY, APPS by commish in special circumstances U122
m110 Secrecy, National Security, international apps. pct 30
m115 Secrecy, orders, review of. also security of property rights
: SECRECY, PTO FILES U122
u122 : SECRET, NOT -- ACCESS TO PTO FILES U122
: SECRET, NOT -- ISSUED APPS, RE-EX FILES, RE-ISSUE FILES,
m503 Serial Number and Filing receipt. c1.54
c1.248 a1 Service of papers. by delivering a copy to the person served.
c1.248 a4 Service of papers. by first class mail. Date of mailing is date of service.
c1.248 a3 Service of papers. by leaving a copy at the person's place of residence with a qualified resident.
c1.248 a2 Service of papers. by leaving a copy at the usual place of business with someone in his employment.
c1.248 a Service of papers. on whom and how.
m710.02 d Shortened Statutory vs time limit periods
c10.18 a1 Signature of agent required. Correspondence read by Practitioner (a1). Original reqd except for when faxes or copy acceptable. Signature certifies (list = read, authorized, good grounds, not for delay). b= violations disciplined.
c10.18 Signature of agent required. Original reqd except for when faxes or copy acceptable. Signature certifies (list = read, authorized, good grounds, not for delay). b= violations disciplined.
c10.18 a Signature of agent required. Original reqd except for when faxes or copy acceptable. Signature certifies (list = read, authorized, good grounds, not for delay). b= violations disciplined.
c10.18 b Signature violations bring big trouble from 10.23(c)(15)
c1.197 b SIR - Sirs are published. (b) is required statement in an SIR. u157
u041 h Small entity reduced 50% fees listed in (a) and (b).
: SMALL ENTITY, DEFINITION 509.02 pg 500-10 CFR 1.9d
c1.28 a Small Entity, Failure to establish
c1.28 b Small Entity, Keep status until issue fee or maint fee due
c1.27 c Small Entity, oath, affidavit
c1.27 Small Entity, oath, affidavit
m509.03 Small entity, claiming status as,
m509.02 Small entity, definitions c1.9
c1.9 e Small entity, Definitions (e) 509.02
c1.9 Small entity, Definitions (e) 509.02
c1.27 : SMALL ENTITY, OATH 1.27
: SMALL ENTITY. 509.02 pg 500-10 CFR 1.9d
* 6* | SMALL ENTITY. 509.02 pg 500-10 CFR 1.9d
: SPECIAL CASES AT THE BOARD, APPEALS 1204
*13* | SPECIAL HANDLING 708.02, CFR 1.102
c1.102 : SPECIAL, MAKE APPLICATION SPECIAL. m708.02, CFR 1.102 no fee for age, health, env quality, energy, super conductivity
* 9.1.1* | SPECIFICATION USC 112
u112 Specification 608.01
m608.01 h Specification (h)= mode of operation
m608.01 i Specification (i)= claims c1.75
m608.01 n Specification (n)= dependent claims, mult dep clams c1.75c
c1.173 Specification of Re-issue Application. form of deletes, adds
c1.71 Specification requirements
*32.3* | SPECIFICATION, AMENDMENT OF: -- adds between dashes -- "identify place of insertion or deletion between quoties"
c1.77 : SPECIFICATION, ARRANGEMENT OF ELEMENTS. c1.77 M601
c1.154 Specification, Design patents, arrangement of, format
* 9* | SPECIFICATION, INCOMPLETE
*32.4* | SPECIFICATION, SUBSTITUTE, 608.01q, c1.125 use
m608.01 q ! Specification, substitute, rewritten 714.20
u112 : SPECIFICATION. make, use, (& utility) USC 112
m2161 Specification. 3 requirements of u112 (first para). 1= written 2= how to make & use 3= bestmode. Utility rqmt (u101) is implied.
m608.01 Specification. Detailed Rqmts, Defects c1.71
m2163 Specification. Written description required.
c1.93 ! Specimens
c1.93 Specimens of compositions of matter
m608.03 ! Specimens, Models, exhibits
c1.94 ! Specimens, models, return of
m102 Status of application, information made public.
m706.03 s Statutory Bar. Abandonment of inv. Foreign pats or no license, 12 mo use
: STATUTORY CLASSES USC 101
*55* | STATUTORY CLASSES USC 101
c1.321 Statutory disclaimer, terminal disclaimer, fee
u157 : STATUTORY INVENTION REGISTRATION USC 157
m710.01 a Statutory periods, computation of time to respond 1.135
m201.09 Substitute Application.
m608.01 q Substitute or rewritten specification m714.20
*32.4* | SUBSTITUTE SPECIFICATION 608.01q, c1.125
m716 ! Success, Commercial, to traverse rejection c1.132
m716 ! Sufficiency of disclosure to traverse rejection c1.132
c1.181 ! Supervisory authority, petition to commissioner to exercise 2 mo time
: SUPPLEMENTAL EXAMINER'S ANSWER AND SURJOINDER BRIEF 1208.04
c1.103 : SUSPEND PROSECUTION 1.103
c1.183 Suspend rules
c10.158 a Suspended attorney shall not engage in unauthorized practice .
m709 Suspension of action (examination). c1.103
u032 Suspension of License
c10.158 ! Suspension/exclusion from practice
m715 Swearing back affidavits. c1.131.
m716 ! Swearing Back, Affidavits or declarations traversing rejections. c1.132
c1.131 a Swearing back, affidavits overcoming rejections m715
c1.131 a2 Swearing back, affidavits overcoming rejections m715
c1.131 Swearing back, affidavits overcoming rejections m715
m715 : SWEARING BEHIND, WAYS 1.131
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c1.321 : TERMINAL DISCLAIMER 1.321 mpep 1490 1.78d 1.321b
m804.02 Terminal Disclaimer, fixes double patenting
*27* | TERMINAL DISCLAIMERS mpep 1490 1.78d 1.321b
m716 ! Testing, comparative results to traverse rejection c1.132
m716 : Testing, comparative results to traverse rejection c1.132 S 12 14
m2107.02 c Therapeutic or Pharm Utility, Special Consideration for, (a)= reasonable correlation sufficient. (b)=Structural similarity with compounds having established utility. (c)= Animal or invitro studies generally sufficient. (d)= (e)= (f)=
m2107.02 a Therapeutic or Pharm Utility, Special Consideration for, (a)= reasonable correlation sufficient. (b)=Structural similarity with compounds having established utility. (c)= Animal or invitro studies generally sufficient. (d)= (e)= (f)=
m2107.02 Therapeutic or Pharm Utility, Special Consideration for, (a)= reasonable correlation sufficient. (b)=Structural similarity with compounds having established utility. (c)= Animal or invitro studies generally sufficient. (d)= (e)= (f)=
: THIRD PARTY PROTESTS 1.291
m2204 Time for filing prior art citation. patent term + 6 years. Limited during reexamination proceedings.
u133 Time for prosecuting applications, actions, 6 mo then abandoned
m710.02 d ! Time limit periods, vs Shortened Statutory times
m706.07 f ! Time to Respond to final rejection
: TIME TO RESPOND, EXTENSIONS OF TIME, list of reasons.
*15* | TIME TO RESPOND, EXTENSIONS OF TIME, list of reasons.
m2265 Time to Respond, extensions of, in Re-examination
m710.01 e Time to respond, Extensions. Page 700-46
m710.02 e Time to respond, Extensions. Page 700-46 c1.136
: TIME TO RESPOND, NORMAL FREE PERIODS
m710.02 Time to respond, statutory period c1.136
m710.02 c Time to respond, statutory period shortened c1.136
m710.04 Time to Respond, two periods running together.
c1.7 Time, ending on Saturday, Sunday, Holiday
: TIMING OF PETITIONS / APPEALS
: TIMING RULES, BASIC DATES OF RUNNING OUT OF TIME
c1.72 Title short as possible, abstract on separate sheet, abstract not for interpreting claims.
m606.01 Title, Change of required by Examiner do it!
* 9.1* | TO OBTAIN AN EFFECTIVE [durable] FILING DATE:
*32.2* | TO THE CLAIMS:
*32.3* | TO THE SPECIFICATION: -- adds between dashes -- "identify place of insertion or deletion between quoties"
m724.04 a Trade secrets
m724.02 Trade secrets
m724.03 Trade secrets
c10.31 c Trademark practice forbidden to agents
: TRADEMARKS CFR 2-- Not for Agents to represent
*48* | TRADEMARKS CFR 2-- Not for Agents to represent
m608.01 v Trademarks, use of. trade names ok. Capitalize trademarks. Avoid in titles.
m716 ! Traversing Rejections c1.132
pct T 31 6a Treaty article 31 has no section 6.
*32.2* | TWICE AMENDED , FORMS 714.22, c1.121 bar to your application.
c1.191 : TWICE REJECTED, FINAL REJECTION, APPEAL AFTER 1.191
{ U
m2133 ! U102b, chapter explaining
m706.02 f U102e rejections
m2186 U103 guidelines, examples.
u103 ! U103 guidelines, examples. SEE m2186
m706.02 j U103 rejections
m716.02 a Unexpected Results, Evidence must shoe. .02(a) = Evidence must show. .02(b) = Burden is on Applicant
m716.02 b Unexpected Results, Evidence Must Show. .02(a) = Evidence must show. .02(b) = Burden is on Applicant
u102 e ! US patent app having foreign priority cannot use the foreign priority as bar to your application.
*56* | USC 102 STATUTE AND EFFECTS OF,
m2174 USC112, first and second paragraph relationship.
m2125.04 ! Use or Sale, "in this country defined" u102b
m2126.01 ! Use or Sale, determination of when.
m2138.05 ! Utility of invention required. (examples for various types of inventions)
{ V
{ W
u4 u101 : WHO CAN FILE A PAT APPL. anyone except PTO employees
: WHO IS AN INVENTOR
c10.40 a ! Withdraw from case (employment) except for --- (list)
: WITHDRAW HOLDING, PETITION TO WITHDRAW HOLDING (NO FEE)
: WITHDRAWAL FROM ALLOWANCE 1.313
m1308 Withdrawal from issue c1.313
c1.313 Withdrawal from issue (list of reasons and conditions)
m2164.02 Working example. Functional example not required.
m2115 ! Workpiece, claims on,. Rather than apparatus does not confer patentability
pr47.1 c WRONG REFERENCE CITED BY PTO
*56.1* | WTO/NAFTA USC 104 INVENTIONS MADE ABROAD.
{ X
{ Y
{ Z
c10.84 a Zealously representation of client, do it by -c5.11 :93 Apr 16 Export and foreign filing license
*~* END | ~
~ : ~LAST, LARGEST ITEM
~ ~LAST, LARGEST ITEM IN LIST.