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ACCESS AMENDMENTS
CONVERSION OF
PROVISIONAL APPLICATION NONPROVISIONAL TO
PROVISIONAL APPLICATION
CONVERSION OF PROVISIONAL
TO NONPROVISIONAL CONTINUATION APPLICATION
APPLICATION
CONTINUATION-IN-PART CONTINUED PROSECUTION
APPLICATION APPLICATION
(CIP) (CPA)
- Nonprovisional
- Provisional
- Conversion of nonprovisional to
- Contains at least 1 claim provisional application
- Is NOT abandoned after 12 months - Conversion of provisional to a
- Requires an oath or declaration nonprovisional
- Continuation Application
- Continuation-In-Part Application
- Continued Prosecution Application
MAILING
ISSUE FEE
CERTIFICATE OF TRANSMISSION
MAILING MAILING
MAILING
MAINTENANCE FEES
HAND DELIVERY
- When to use
o Through error w/out deceptive
intent – failure to make reference to prior
- Term is 14 years from date of grant copending app & failure doesn’t affect what is
- There is no maintenance fee claimed but ref in a record of application
- Only one claim is present o Error w/out deceptive intent, prior
- Distinct invention is mandatory app ID’d elsewhere, petition under 37CFR
- May not file under PCT 1.324 & fee
- Period of foreign priority is 6 months - 2 statutory requirements
- May not file a provisional application o Applicant’s mistake (clerical or
typo)
o Correction must not involve
changes that constitute new matter
- All information material to patentability of
invention must be disclosed to Office w/ candor
& good faith
- Inventors may apply for a patent jointly - Rules governing duty
even if: o Info includes more than just patents
o They did not physically work
& printed publications all presently known
together on invention or they did not work at
info
same time on invention
o Exists until app becomes
o They made unequal
abandoned
contributions, meant they each made
o Exists even after patent is issued
different claims (so long as they pertain to
- Who had duty to disclose?
the same invention)
o Each inventor, reg practitioner,
assignee, every other person involved in prep
of patent
- Time period for payment of issue fee is
statutory and cannot be extended
o Fee can be paid late but app will
- Must accompany a facsimile and is used
have become abandoned during time period
as proof of establishing when fax was received
- Possible to withdraw from issue & then file
by PTO
continuation application
o PTO will date stamp corres. when
- 37 CFR 1.137 discusses paying issue fee
received
late
o Faxes can’t be used for anything
o Same procedure as reviving
to obtain an app filing date
application
o Individual may state the date on
o States app is basically abandoned
which the paper will be transmitted
& will have to be revived
Prove unavoidable or
unintentional delay
- May be used for any type of
correspondence
- It will be considered filed on the date of - Date is based on date correspondence is
the deposit, whatever day of the week that sent, never on the date it is received
may be - Must be addressed correctly with enough
- Correspondence must state “Express postage for 1st class mail & must include a
Mail Post Office to Addressee” signed dated certificate of mailing with each
o Service must be provided by US piece of correspondence Listed
postal svc - Only certain types of correspondence may
o “date in” must be entered by the be sent via a Certificate of Mailing
USPS and the mailing label must be
completed by the USPS
- Required on all patents issued after 12
DEC 1980, except design or plant patents
- Fees are due at 3 time periods thru
patent life
o 3yrs & 6 month after grant -
$830.00
o 7yrs & 6 month after grant -
- Hand delivery is only available during
$1,900.00
Office hours, you should receive a receipt back
o 11yrs & 6 month after grant -
for the papers as proof of their delivery
$2,910.00
- Grace period of 6 months (4yrs, 8yrs &
12yrs)
- When paying during 6 month grace
period, there is a surcharge required in
addition to the payment of the maintenance
fee
STATUTORY INVENTION
PETITION TO MAKE SPECIAL
REGISTRATION
CLAIMS CLAIMS
- Same as the filing date of the US - New claims in the CIP have the filing date
application (the filing date of the foreign priority of the new application
document is not the effective filing date, - Claims supported by the earlier parent
although the foreign filing date may be used to application will receive the same filing date as
overcome certain applications) the earlier application
- Establishes 4 conditions
- Where the invention becomes abandoned
o Foreign app must be filed more
- If it is abandoned it cannot be patented
then 12 mths before effective filing date of
- Abandonment must be a deliberate
US app
surrender of patent rights
Continuation-in-part o Does not have to be expressly
breaks chain of priority
abandoned
o Foreign & US app must be filed
o It can be expressed or implied
by the same applicant, legal reps or assigns
either by actions or inactions of the inventors
o Foreign app must have actually
- A mere lapse of time will not bar a patent
issued as a patent or an inventor’s o Exception is when there is a priority
certificate
contest under USC 102(g) & applicant
o Same invention must be involved
abandons, suppresses or conceals the
- Cannot filed an app if have foreign pat invention
for >1yr
- 102(e)(2) – the date the first US - 102(e)(2) – the date is the regular US
provisional or nonprovisional application was application was filed
fied
- 102(e)(1) date for an int’l app for WIPO – - 102(e)(1) date for an int’l app for WIPO –
There is none There is none
- 102(e)(1) date for publication by USPTO - 102(e)(1) date for publication by USPTO –
– There is none There is none
- 102(e)(2) date for patent – The filing date - 102(e)(2) date for patent – There is none
of the international application
- Although it cannot be applied under 102(e)
- Int’l publication by WIPO can be applied the int’l publication by WIPO can be applied
under 102(a) and (b) as of its publication date under 102(a) and (b) as of its publication date
- 102(e)(2) date for patent – The filing date - 102(e)(2) date for patent – The filing date
of the regular US app that claims the benefit of of the international application
international application
OVERCOMING REJECTIONS
35 USC 103
35 USC 103(a)
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