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35 USC 102 35 USC 102(a)

35 USC 102(b) 35 USC 102(c)

35 USC 102(d) 35 USC 102(e)

35 USC102(f) 35 USC 102(g)

35 USC 101 35 USC 112


Prior art includes:
- patent for the same subject matter
anywhere in the world
For anticipation:
- public knowledge in the US only
Reference must teach every aspect of the
o must be used in this country
invention – either explicitly or impliedly
- publication anywhere in the world
- use by others in the US only
refers to different inventive entity

- abandoned inventions will be rejected - if patent or publication printed or issued


- if invention abandoned cannot be more than 1 year or public knowledge or use
patented later in US = rejection
o ie – if 10 yrs pass w/out filing - Statutory bar – inventor discloses work
more than 1 year before obt. Patent
o delay in making first application is not
- Experimental use doesn’t bar a patent but
sufficient to determine abandonment commercial exploitation is incidental

- person entitled to patent unless invention


Patent was filed by another with an earlier filing 1st patented or subject of invention certified by
date app., legal reps or assigns >12mths before in
- doesn’t apply to apps filed before 20 US
NOV 2000 - 4 conditions
- to qualify as ref: US patent, US app or o More than 12 months filing of
WIPO publication of international app
foreign app
- International app
o Foreign filed by same US app
o In filing date after 20 NOV 2000,
o Must be granted before US filing
designate US, publish under PCT
date
Art21(2) in English
o Same invention must be involved

- (g)(1) conflict w/ priority during course of


an interference
- (g)(2) invention made in this country - if subject matter invented by someone else
- US – 1st to invent rather than 1st to invent and not inventor(s) listed
- Constructive reduction is date of filing at - inventor listed must be those exactly those
PTO that invented work
- Actual reduction – sufficiently tested to - no requirement that inventor be the one to
its intended proven purpose reduce to practice as long done on their behalf
- Diligence – time b/w actual red and
disclosure
- Enabling disclosure - inventions will be granted for “any new &
o Enablement found in specification useful process, machine, manufacture, or
o Must be consistent with published composition of matter, or any new and useful
info improvement thereof”
- Best mode - Rejections based on lack of utility
o To restrain inventors to conceal o Any substantially unaltered thing
preferred embodiments occurring in nature
o No requirement to update o Printed matter
- Dependent claim can’t be broader than o A scientific principle divorced from
claim it depends from tangible structure
- Claims limitation must use “means for” or o Mathematical discoveries not
“step for” patentable

ACCESS AMENDMENTS

APPLICATION TYPES NONPROVISIONAL APPLICATION

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)

- Files open to public


o Issued patents or stat invent.
- Must be signed by Registrations
o Attorney or agent of record o All reissue applications
o Registered attorney or agent acting o All requests for re-exam. or papers
under 37 CFR 1.34(a) related
o Assignee of entire interest or all o Files of any interference
assignees of partial - Pending or non-published abandoned patents
o All applicants may be viewed by
- New matter includes: o No members of the public 
o Matter wholly unsupported by confidential
original disclosure o Any of the inventors except in cases
o Adding specific %s or compounds where assignee requested otherwise
when original was broader o Any assignee; any license of entire
o Omission of a step from a method interest
o Any attny/agent of record or authorized
by inventor

- 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

- Requires a petition under 37 C.F.R.


1.53(c)(2) and a fee - Contains no claims
- The nonprovisional will become a - Is abandoned after 12 months
provisional application and will keep the - No oath or declaration is required
original filing date to the nonprovisional
- In case of a successful conversion – only
one app & that app has single filing date – date
- If examiner rejects 1 or more claims filed
of provisional app
in original app – continuation may be filed w/in
- Conversion will adversely impact on the
3 months of rejection
term of any patent to issue from the application
o Requires new fee & newly written
- Conversion will result in the term of any
claims & receives new filing date
patent to issue from app to be measured from at
o No new matter is accepted
least the filing date of the provisional app
- Must be filed during pendency of parent o Can avoid by filing nonprovisional
- Need only have one inventor in common
app claiming benefit of provisional app under
35 USC 119(e)
- If inventor makes improvements after they
- Continuation application of prior file original app  may file CIP to cover
nonprovisional app claiming a design may be improvements
filed as a CPA - New material will have new filing date, old
- CPAs filed under 37 CR 1.53(d) material will have date of original application
o Have same serial number as its - 1st app must be copending
parents - CIP contains new matter over – some
o Cannot be filed for provisional substantial portion of all earlier apps repeated
apps - Fresh set of papers w/ oath must be sent
o Can be filed for PCT apps in - Filed before parent app becomes
national stage abandoned
- Filed under 37 CFR 1.53(b)

CERTIFICATE OF CORRECTION DESIGN PATENTS

DUTY TO DISCLOSE INVENTORSHIP

MAILING
ISSUE FEE
CERTIFICATE OF TRANSMISSION
MAILING MAILING

CERTIFICATE OF MAILING EXPRESS MAIL

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

NEW MATTER PATENT TERMS


PROTEST SMALL ENTITY

STATUTORY INVENTION
PETITION TO MAKE SPECIAL
REGISTRATION

CLAIMS CLAIMS

DEPENDENT CLAIMS DEPENDENT CLAIMS

- Utility and plant patents filed after 8 JUN


- Matter not in original specifications, claims,
1995
or drawings is usually considered new matter
o Term ends 20 yrs from date of
- Where new matter is confined to
patent app filed
amendments in the specification a review of the
- Design patents end after 14 years – term
examiner’s request for cancellation is by way of
begins on date patent issues
petition
- Continued prosecution application (CPA)
- Where alleged new matter is introduced or
– will have same app # and filing date of
affects the claims, thus necessitating their
parent
rejection on this ground, the question becomes
- Reissues – term is unexpired part of
an appealable one
parent
- Small entity receive a 50% reduction in
certain fees
o Owner or officer of app may sign - Any member of public may submit a
statement for this not attorney protest & attorney may file protest w/out naming
- Those who qualify client
o Independent inventors (w/ no - Unless a protestor granted access to
assignment) original app – protestor not entitled any info from
o Small businesses (less than 500 PTO, even mere fact that such app exists
empl.) - Protest must be submitted prior to mailing
o Nonprofit organizations of a Notice of Allowance  application must be
- Request refund based on change in pending when examiner receives the info
small entity status – petition under 37 CFR
1.28(a)(b) with in 3 months
- DO NOT require fee to make special
o Illness/health of applicant
o Age of applicant
o Environmental contributions
- Original SIR can be abandoned and
o Enhancement of energy sources
replaced by a continued application
- DOES require fee to make special
o In this case, applicant will get the
o Prospective manufacture -
earlier filing date
Infringement
o Applicant must file an express
o Safer DNA – HIV/AIDS and
abandonment of the original application and a
cancer
timely request or petition to withdraw the
o Superconductivity - countering
request for an SIR prior to the publication of
terrorism the SIR
o Biotech apps filed by small
entiies
o All other instances where petition
to make…
- Rules
- Grammatical Rules
o Placed at end of specification
o Claims should begin with “I (or
o If more than 1 – separate by line of
we) claim” or “The invention claimed is”
indentation
o Claim is divided by a colon (:)
o Arranged in order of scope – 1st is
which generally describes things or steps
broadest
o Either ; or , separates each
o Claims of like species should be
paragraph
grouped together
o Last step should have an “and”
o Process & product claims need to
after the semicolon (; and)
be separately grouped
o Each claim should begin w/ a
o Any measurements – Metric 1st
capital and end with a period (only 1st word
then English
capitalized)
o May contain tables if necessary
- RULES
o Dependent claim must further - Series of singular dependent claims is
limit the subject matter of a previous claim allowed where a dependent claim refers to
o No minimum or max # of preceding claim, which in turns, refers to another
dependent claims preceding claim
o Dependent claim may refer back - Since independent claims are broadest
to any preceding claim- may be a string of claims – broadening of dependent claim cannot
these broaden scope of invention
o Claim depending from a - Lesser burden of proof may be required to
depending claim should not be separated make out prima facie obviousness for product-
from any claim which does not also depend by-process then when product is claimed in
(directly or indirectly), from the dependent conventional fashion
claim
MULTIPLE DEPENDENT CLAIMS MULTIPLE DEPENDENT CLAIMS

MULTIPLE DEPENDENT CLAIMS


CORRESPONDENCE
MARKUSH CLAIMS

ESSENTIAL MATERIAL ESSENTIAL MATERIAL

PRIOR ART PRIOR ART

Enabling References Prima Facie

EFFECTIVE FILING DATE EFFECTIVE FILING DATE

Continuing or divisional of Continuing or divisional of


earlier US application earlier international application
- Rules governing
o May only refer to one set of claims
o Cannot depend on another multiple
- Series of dependent claims that refer
dep clm
back in the alternative form to more than 1
o Cannot depend on more than 1
preceding independent or dependent
previous
- Determining fees – count up all
o May not serve as basis for multiple
dependents
o Claim 2 depend from 1 = total of dep clm
o Will not contain limitations of all
2
o Claim 3 depend from 1 or 2 = alternate claims
o Must be considered in same
total of 3
manner as plurality of single dep claims
o Restriction may be required b/w
embodiments of multiple dependent claim
- Acceptable form of alternative expressions
o Always contains the phrase
“consisting of” and the conjunctive “and”
- Correspondence will be held with the
 They never contain “or”
listed attorney or agent
- Example
- An application number must be used to
o R is selected from the group
identify a patent application in all
consisting of A, B, C and D
correspondence
o “chosen from the group
consisting of” and “chosen from the group
consisting of essentially of”
- Material NOT allowed to be incorporated
by ref in US utility application includes:
- Material is considered necessary if it:
o Essential material from foreign
o Is necessary to describe the
patent or app
claimed invention
o Matter from a magazine article
o Provides enabling disclosure of
o A US article that incorporates the
the claimed invention
o Describes the best mode material from another patent by reference
- Nonessential material is background
- Essential mat. may be incorporated by
material – may be incorporated by reference
ref if it’s
from
o a US patent
o Patents or apps published in the
o a pending US application
US
o an abandoned app less than o From publications or foreign
20yrs old – to same extent as a copending patents
app o From a prior filed, commonly
owned US app
- Level of disclosure required w/in a
reference to make it an “enabling disclosure” is
the same no matter what type of prior art is at
- Where claimed and prior art products are issue
identical or substantially identical in structure - Does not matter whether prior art ref is a
or composition, or are produced by identical or US patent, foreign patent, a printed pub, or other
substantially identical processes  prima facie form
case of either anticipation or obviousness has - Reference contains an enabling disclosure
been established if public was in possession of the claimed
invention before the date of the invention
- Shows that app’s invention is not novel
and is anticipated tf will be rejected
- Same as the earliest filing date in the line - Same as the earliest filing date in the line
of continuing or divisionals of continuing or divisional

EFFECTIVE FILING DATE EFFECTIVE FILING DATE

CIP or earlier US or international app Applications claiming foreign priority

EFFECTIVE FILING DATE


REJECTION ON PRIOR ART
Application claiming priority
102 vs 103
to a provisional application

OVERCOMING REJECTIONS OVERCOMING REJECTIONS

35 USC 102(a) 35 USC 102(a)

OVERCOMING REJECTIONS OVERCOMING REJECTIONS

35 USC 102(b) 35 USC 102(b)


OVERCOMING REJECTIONS OVERCOMING REJECTIONS

35 USC 102(c) 35 USC 102(d)

- 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

- 35 USC 102 – focuses on the novelty


and loss of right to patent
o Claim is anticipated by reference
- Filing date of the provisional application
- 35 USC 103 – refers to nonobvious
subject matter
o References must be modified in
order to meet the claims

- Can be overcome by:


o Perfecting a claim to priority A person shall be entitled to a patent unless –
under 35 USC 119(a)-(d) (a) the invention was known or used by others in
o Amending the claims to be this country or patented or described in a printed
patentably distinguishable over the prior art publication in this or a foreign country before the
o Persuasively arguing claims are invention
patentably distinguishable from the prior art
o Filing affidavit under 37 CFR - Applies when the reference has a
1.132 that ref invention is not by “another” publication date earlier than the effective filing
o Filing affidavit under CFR 1.131 date & it is not the applicant’s own work
to “swear back”
- Persuasively arguing that the claims are - Asks if the invention was public or
patentably distringuishable from the prior art patented anywhere else in the world
- Amending the claims to be patentably - Ask if it was on sale in this country, or in
dinstringuishable from the prior art public use
- Perfecting the priority o Public use must be in the US
o Amending spec to contain o Foreign sales do not count
specific reference to prior application - 1 year time bar is measured form US filing
o Filing app data sheet contain date
specific reference to prior application - Market testing is not proper exception to
- Has to be at least 1 intermediate bar
application between provisional & - Experimental use does not bar a patent
nonprovisional - ∆ b/w 102(a) – relates to invention date &
102(b) – relates to filing date

- 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

OVERCOMING RJECTIONS OVERCOMING REJECTIONS

35 USC 102(e) 35 USC 102(e)

For a reference based on a regular US


For a reference based on a regular US
provisional app with a priority/benefit
application filed with no claims for
claim under 35 USCC 119(e) or 120 to a
benefit or priority:
prior US provisional or nonprov app:
What is the 102(e)(1) date?
What is the 102(e)(1) date?
What is the 102(e)(2) date?
What is the 102(e)(2) date?
For a reference based on the national stage
For a reference based on a regular US of an int’l app if filed on or after November
application with a priority/benefit 29, 2000, designates the US and is published
in English under PCT Article 21(2):
claim under 35 USC 119(a)-(d) to a
What is the 102(2)(1) date for an int’l app
prior foreign application: by WIPO?
What is the 102(e)(1) date? What is the 102(e)(1) date for a publication
What is the 102(e)(2) date? by USPTO?
What is the 102(e)(2) date for a patent
For a reference based on national stage For a reference based on the national
of int’l app if filed on or after 29 NOV, state of int’l app if filed prior to 29 NOV
2000, designates US but not published 2000, designating the US and published
in English under PCT Art 21(2)? in any language under PCT Art 21(2):
What is the 102(e)(1) date for an int;l What is the 102(e)(1) date for an int;l
app by WIPO? app by WIPO?
What is 102(e)(1) date for publication What is 102(e)(1) date for publication
USPTO? USPTO?
What is 102(e)(2) date for patent? What is 102(e)(2) date for patent?
For a reference based on a reg US app
For a reference based on a US app that is a
that is a continuation of an int’l app filed
continuation of an int’l app filed on or after
on or after 29 NOV 2000, designating US
29 NOV 200 but not published in English
and published in English under PCT Art
under PCT Art 21(2):
21(2):
What is the 102(e)(1) date for an int;l app
What is the 102(e)(1) date for an int;l app
by WIPO?
by WIPO?
What is 102(e)(1) date for publication
What is 102(e)(1) date for publication
USPTO?
USPTO?
What is 102(e)(2) date for patent?
What is 102(e)(2) date for patent?
How to overcome
- Persuasively argue claims are patentably
- Most used when the publication or issue
distinguishable from the prior art
date of the reference is too recent for the
- Amending claims to be patentably
reference to the applied under 35 USC (a) or
distinguish.
(b)
- Filing and affidavit or declaration under 37
- Allows for certain prior art to be applied
CFR 1.132 showing ref invent. is not by
against the claims as of its effective US date
“another”
- Where “patent was filed by another
- File an affidavit or declaration under 37
with an earlier filing date”
CFR 1.131 (swearing back) showing prior
- Inventive entity of app must be ∆ from ref
invention
- Reference date is the filing date not date
- Perfect claim to priority under 35 USC
of inventor’s conception or reduction to
119(a)-(d)
practice
- Perfect priority under 35 USC 119(e) or
120
- 102(e)(1) – the date the first US
provisional or nonprovisonal application was - 102(e)(1) – the date is the regular US
filed application was filed

- 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) – the date is the regular US


- 102(e)(1) date for an int’l app for WIPO –
application was filed
filing date of the international application
- 102(e)(2) – the date is the regular US
- 102(e)(1) date for publication by USPTO
application was filed
– filing date of the international application
- Here the date of the foreign app doesn’t
- 102(e)(2) date for patent – filing date of
count under 102(e), just the date of the first
international application
regular US app

- 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)(1) date for an int’l app for WIPO –


There is none - 102(e)(1) date for an int’l app for WIPO –
The filing date of the international application
- 102(e)(1) date for publication by USPTO
– the filing date of the regular US app that - 102(e)(1) date for publication by USPTO –
claims benefit of the int’l app The filing date of the international application

- 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

For a reference based on a regular US


app that is a continuation of an int’l
app filed prior to 29 NOV 200,
published in any language: OVERCOMING REJECTIONS
What is the 102(e)(1) date for an int;l
app by WIPO? 35 USC 102(f)
What is 102(e)(1) date for publication
USPTO?
What is 102(e)(2) date for patent?
OVERCOMING REJECTIONS OVERCOMING REJECTIONS

35 USC 102(g) 35 USC 102(g)

OVERCOMING REJECTIONS
35 USC 103
35 USC 103(a)

OVERCOMING REJECTIONS OVERCOMING REJECTIONS

35 USC 103(b) 35 USC 103(c)

Factors that support obviousness

- When the “applicant is not the inventor”


- 102(e)(1) date for an int’l app for WIPO –
- Even if just some of the inventors are left
There is none
out, this rule will bar a patent
- Listed inventor must be exactly those
- 102(e)(1) date for publication by USPTO –
who invented the actual work
the filing date of the regular US app that claims
- Used in cases the applicant derived the
benefit of the int’l app
invention from another inventor
- One must contribute to the conception of
- 102(e)(2) date for patent – The filing date
the invention in order to qualify as an inventor
of the regular US app that claims the benefit of
- An inventor may consider & adopt
international application
suggestions from any sources
- Basis for interference practice in the US
- Suppression and concealment - (g)(1) – may be used when a question
o Need not be attributed to inventor regarding the priority of the invention is
- Conception discovered during the course of an interference
- Reduction to practice - (g)(2) – the invention was made in this
- Simultaneous inventions country by another inventor who had not
- Diligence abandoned, suppressed or concealed it
o Time b/w concept and reduction - 3 critical components
o Prior invention must’ve been made in
to practice
the US
- Obviousness
o Prior invention must not have been
o Invention as a whole must be abdn, etc
considered to determine obviousness o Partial exception is made 4 commonly
owned inv
Establish prima facie case of obvness 3 criteria
- Must be some suggestion or motivation
either in ref or knowledge available to the
public to modify the ref or combine teachings
- Must be a reasonable expectation of - Based on obviousness of the subject
success matter
- Ref must teach or suggest all the claim - Appropriate if someone skilled in the art
limitations would consider the invention obvious over the
Arguments against obviousness rejection prior art
- Person skilled in the art wouldn’t see
combo suggested by the examiner as obvious
- Resulting combo is not the claimed
invention
- Only applicable to biotech processes
Requirements
- Biotech process & compositions should be
in the same app or separate apps w/ same filing
- Subject matter which would otherwise be
date
prior art to the claimed invention & the claimed
- Biotech process & compositions must be
invention itself must be commonly owned at
owned by the same person at time the process
the time the invention was made
was invented
- Patent issued on process must include
claims to composition of matter involved with the
process – if 2 ∆ pats must expire at same time

- Aesthic design changes


- Elimination of a step or element and its
function
- Automating a manual activity
- Changes in size, shape or sequence of
adding ingredients
- Making object portable, integral,
separable, adjustable or continuous, reversal,
duplication or rearrangement of parts
- Purifying an old product
- -

- -

- -

- -

- -

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