Section 1

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Pre-AIA 102(c)

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Date created

Mar 1, 2020

Cards (92)

Section 1

(50 cards)

Pre-AIA 102(c)

Front

inventor abandoned the invention (abandonment must be intentional)

Back

Pre-AIA 102(g)

Front

"(1) Prior ivention must have been made in US (NAFTA or WTO counts) (2) Prior invention must not have been abandoned, suppressed, or concealed (3) Partial exception for common ownership"

Back

Continuation in part Application

Front

"Original and CIP are ""co-pending"" Repeats substatinal portion of parent and adds new matter not disclosed in parent 2 separate filing dates on claim-by-claim basis"

Back

Certificate of Mailing

Front

"- Rule 1.53(b) & Rule 1.53(d) --> date received at PTO - Notice of Appeal & Amendment --> Date deposited in post office"

Back

35 USC 120

Front

"Provisional Priority - can ask for provisional filing date if less than 12 mo has passed since provisional filing --> no provisionals for design applications"

Back

AIA 102(b)(2)

Front

"Exceptions to 102(a)(2) art --> regards disclsoures in applications and patents (a) subject matter disclosed obtained by joint inventor: limits use of inventors own work as prior art when disclosed in US patentts, WIPO appl or US PGPub (b) Disqualifies subject matter filed by another if: - subjet matter was already disclosed by inventor - inventor disclsoure was < 1 year before filing own application (c) subject matter disclosed and claimed invention were commonly owned - for unplished patents - not a 102(a)(1) exemption --> if published app >1 yr it is prior art under 102(a)(1)"

Back

Pre-AIA oath requirements

Front

"(1) Believe themselves to be true and first inventors; (2) Have reviewed and understand contents of application (3) Acknowledge duty to disclose all info known to be material to patentability of application **Must state: citizenzhip, residence & post office address"

Back

Continuation Application

Front

"Original and CON are ""co-pending"" Repeats everything from parent but removes anything already allowed/issued"

Back

When do applications publish?

Front

"- 18 mo after filing - design patents do not publish"

Back

AIA 102(b)

Front

Defines exceptions to prior art

Back

AIA 102(a)

Front

defines the scope of prior art

Back

Attorney withdrawal of Power of Attorney

Front

"Effective upon approval by commisioner To withdraw you must: (1) give reasonable notice to client before reply period expires (2) deliver all papers/property/funds to which client is entitled (3) notify client of any replies that may be due & timeframe in which they must respond"

Back

Mail

Front

All filings are dated the date received at the PTO

Back

Client Revocation of Power of Attorney

Front

"Client can revoke at any time effective as of date received at USPTO"

Back

Pre-AIA 102(d)

Front

"Bars patentability of ALL has occurred: (1) same applicant/assignee filed application for same invention in foreign country (2) application in foreign country filed >12 mo before US Appl is filed (6 mo. for design appl) (3) Foreign patent issued before US Appl was filed --> foreign patent need not have been published"

Back

Necessary to receive filing date (non-provisional)

Front

"- Specification - Claim - Any required drawings"

Back

112(f)

Front

"Means + Function Ex: An apparatus comprising: a workpiece holder; an ion source; and means for cooling the workpiece during cooling"

Back

Facsimilie

Front

"-cannot use to file Rule 1.53(b) - Rule 1.53(d) --> date is date received at PTO - Notice of appeal & amendments --> date is date sent if sent w/ certificate of transmission"

Back

AIA 102(d)

Front

"Defines date of prior art use as of its filing date - Effective date is either: - date prior art itsself was filed; or - any priority date to which it is entitled - published applications, issued patents, published WIPO/PCT that designates US"

Back

Substitute Statement

Front

"- Application is made on inventors behalf because he/she is dead/unavailable/insane - if inventor dies power of attorney is revoked unless coupled to an interest (ie owner) - hostile inventors: if no inventors agree to sign/ dec may be excecuted by person/entity that can demonstrate sufficent proprietary interst or to whom inventor has assigned"

Back

Pre-AIA 102(a)

Front

"before the date of the invention by another: - invention was known/used in USA - patented anywhere - published anywhere"

Back

AIA 102(a)(1)

Front

"Before the effective filing date: - patented anywhere (issue date, does not need to be published) - described in printed publication anywhere - in public use / on sale (must be publicly informing) - otherwise available to public (ie, thesis, talks, posters) no requirement of by others --> inventor can make his own 102(a)(1) art"

Back

Requirements for Recording Assignments

Front

"(1) Be in English, or accopanied by English Translation (2) Identify all patents / applications by number (3) Accompanied by correct fee (4) Legible and on only one side of paper (5) Be an original or certified copy (6) Accompanied by coversheet"

Back

Federal Express

Front

All filings are dated the date received at the PTO

Back

Term

Front

Definition

Back

Restoration of Priority

Front

Can restore rights upto 2 extra months (14 mo from priroty date) if failure to file was unintentional

Back

Express Mail

Front

All filings are dated "Date In"

Back

Pre-AIA 102(f)

Front

Bars patenting subject matter which applicant did not invent

Back

Supplemental oath

Front

"submitted to replace defective oath/dec matter of right - can be filed even after allowance"

Back

AIA 102(c)

Front

"Defines common ownership Prior art under 102(a)(2) is disqualified by 102(b)(2)(c) if: (1) subject matter disclosed was developed and claimed invention was made by members of a joint research agreement that was in effect before the filing date; and (2) claimed invention was made under activities w/in scope of joint research agreement; and (3) application for patent discloses names of parties in joint research agreement."

Back

AIA 102(b)(1)

Front

"Exceptions to 102(a)(1) art - Disclosures made less than 1 year before filing date: (a) limited to inventors own work - grace period for inventor to file; - can be inventor or 3rd party disclosure of inventors work (b) disclosures of inventors work predates 3rd party disclosure - your disclsoure must still be within 1 year under 102(b)(1)(a) - your disclsoure must be ""more complete"" --> anything additional by 3rd party is prior art"

Back

Utility Application

Front

examined and must be issued or abandoned in its due course

Back

Small entity

Front

"(1) independent inventor not assigned/licensed rights to a non-small entity (2) IRS-recognized non-profit or public accredited university (3) small business as defined by regulation of small business assocation --> no more than 500 employees **Must claim small entity status, can obtain refund for 3 mo if paid in full"

Back

Pre-AIA 102(b)

Front

"More than 1 year prior to filing: - printed patent or publication anywhere - public use --> experimental exception if necessary to perfect invention, market research is not experimentation - sale / offer for sale in USA --> sale/offer was no experimental, and invention is ready for patenting; sale of rights is not a sale under 102"

Back

Substitute Application

Front

"original and Substitute are NOT copending same disclosure as earlier application"

Back

Microentities

Front

"A small entity where: (1) Neither applicant nor inventor has previously filed more than 4 non-provisionals themselves (appl filed at employment does not count towards the 4); and (2) Neither applicant nor inventor has household medium income >3x median income"

Back

1.131 Affadavit

Front

"Gives date of conception prior to filing -gets behind Pre-AIA 102(a), 102(e) and 102(g) art -before 12/7/93 --> no coneption outside USA -on/after 12/8/93 --> conception in FAFTA country (conception occurs on 12/8/93 or later) -on/after 1/1/96 --> conception in WTO country"

Back

35 USC 119

Front

Foreign Priority - can ask for foreign filing date if less than 12 mo has passed since foreign filing

Back

divisional Application

Front

"Original and DIV are ""co-pending"" Later app for distinct & independent invention carved out of parent application"

Back

Notice of Omitted Items

Front

"- drawing / page omitted from papers - no response --> filing date is date w/o figure or page - can changeg filing date to date omitted page was filed - can retain filing date but application my be defective"

Back

Bridging Applications

Front

"- Filed before 3/16/13 but have at least one claim w/ filing date after 3/16/13 - Must file transition statement - New AIA102 applied to entire application - Gets benefit to old 102(g)"

Back

Access: pending / abandoned

Front

"- each inventor named in app (even if filed w/o inventor signature) - Assignee of entire/partial interest or exclusive licensee -Attorney/Agent of record"

Back

AIA 102(a)(2)

Front

"Before the effective filing date: (1) WIPO Published Applications - must designate US -does not need to publish in english - PCT does not need to enter national stage (2) Filing date includes foreign priority date if it results in a US Application & issued patent * must name another inventor --> even if only 1 different"

Back

Access: unpublished abndoned files

Front

"-only if satisfies an exception, then a only a written request is needed: (1) refered to in US Patent/ PGPub (2) Refered to in Application open to public (3) Refered to in PCT published App that designates US"

Back

Access: Unpublished pending

Front

"-must petition for access, served upon applilcant / owner & pay fee - Petition must establish special circumstances: (1) Owner using application to interfere w/ competitors business (2) Patent relies on appl for priority (can only see priority part) (3) Appl is incorporated by reference in entirety"

Back

Post AIA oath requirements

Front

"(1) identify inventor executing oath by legal name (2) Identify application to which it is directed (3) Statement that he/she believes named inventors to be original inventors of claimed invention (4) state application was made by person executing oath"

Back

37 CFR 1.130

Front

"Affidavit to overcome prior art rejections: - 1.130(a) - exception of inventors own work - 1.130(b) - exception of 3rd party intervening disclosure"

Back

Notice of Missing Parts

Front

"- no rights are in jeopardy - must respond by filing/paying fee/oath/translation - filing date will not change - no opossibility to change filing date"

Back

Pre-AIA 102(e)

Front

"Domestic: 102(e) date is earliest effective filing date - publishes 18 mo after filing but 102€ date is the filing date PCT: - filed on/after 11/29/00 --> 102(e) date after designates US & publishes in english -filed before 11/29/00 --> 102(e) date ater fee, oath & translation arrive at USPTO Foreign: - NEVER recieves a 102(e) date"

Back

Foreign Priority

Front

"12 mo from first foreign filing (6 mo for design) - does not move back 102(e) date -creates 102(a)(2) art as of effective filing date if publishes/issues US or PCT"

Back

Section 2

(42 cards)

Double patenting

Front

"Obviousness type - can be overcome w/ terminal disclaimer Same invention type - claim is exactly of same scope as other patent/application; cannot overcome w/ terminal disclaimer"

Back

Multiple dependent claims

Front

"- cannot depend from another multiple dependent (calculated as single dependent in fee calculations) - can only depend from >1 claim in alternative (""or"" is ok; ""and"" is forbidden) -see MPEP608.01(n) for correct wording "

Back

Board Decision (Appeals)

Front

"The board can: (1) Affirm or reverse examiner in full or part or remand (further consideration) (2) Issue statement w/ new grounds of rejection (can amend/argue and have examiner reconsider or have new rejection reconsidered by the board) - 2 mo to request rehearing following board decision - can file RCE/CON during appeal & expressly abndon - can seek review by CAFC or District court"

Back

Patentable Subject Matter

Front

"(1) Process (method) (2) Machine (collection of elements) (3) Manufacture (4) Composition of matter"

Back

Plant applications - patentable plants

Front

"All plants are patentable except: (1) Bacteria (2) Tuber Propogated --> potatoes and jerusalem artichokes, the part that propogates you eat"

Back

Requirement for information

Front

"- PTO ses info necessary to properly examine - not necessary for complete exam on merits"

Back

Patent Term Adjustment

Front

"-Applies to plant/utility filed on/after 5/29/00 -Get PTA for: (1) certain administrative delays (2) overall pendency from initial filing to issue >3 years (3) Delays due to interference, secrecy order & successful appeals - PTA can be reduced by applicant delay, but can never be negative - RCE cutys off additional PTA due to pendency >3 years"

Back

Design Patent Claims

Front

"""the orinamental design for..._________... As shown"" must be ornamental - hidden devices are not ornamental"

Back

Process and apparatus claims distinct if:

Front

"Either: (1) Process can be practiced by a materially different application (2) Apparatus can be used to practice different process"

Back

Apparatus and Product claims distinct if:

Front

"Either: (1) Apparatus is not obvious apparatus to make product & can be used to make other products (2) Product can be made by other apparatus"

Back

Do not have a right after FOA to

Front

"(1) Interview (2) Amend (3) Submit affidavit"

Back

Application data sheet

Front

"- only way to assert priority - includes priority cclaims, applicant info, correspondence address, classification info and residence address"

Back

Utility & Plant Patent Term

Front

"Filed before 6/8/95: - 17 years from issue or 20 years from filing, whichever is greater Filed on/after 6/8/95 -20 year from filing - provisional does not count towards patent term - PCT does count towards patent term"

Back

Information Disclosure Statement

Front

"- Filed w/in 3 mo of application filing or before 1st OA --> only IDS needed - Filed after NFOA, before FOA or allowance --> statement or fee needed - Filed after FOA, close of prosecution or allowance, before issue fee is paid --> statement AND fee required - Statement --> each item was cited for first time in foreign prosection <3 mo before date of IDS; OR no item was known to anyone more than 3 mo before date of IDS"

Back

When do automatic extensions not apply?

Front

"(1) Where OA states (2) Reply Brief (3) Request for oral hearing (4) Responding to decision by board (5) Anything in interference (6) due dates in reexamination"

Back

Rights after final

Front

"Amendents can be submitted by right only if: (1) cancel claims (2) comply w/ request of form or adopt examiner suggestion (3) present claism in better for for consideration on appeal"

Back

Certificate of Correction

Front

"- correct clerical / typographical errors - USPTO mistakes are free - cannot be used to correct substantive mistakes"

Back

Statutory invention registration (Pre AIA)

Front

"-Like a patent but does not get examined - publishes and gets a 102€ date, but does not confer rights to exclude - can be used as prior art & in interferences"

Back

Incorporation by reference

Front

"- can incorporate issued US patent or published application - cannot incorporate foreign patent/application, a publication, or US patent that incorporates by ref another patent"

Back

Design Application Double Patenting

Front

"May exist between: (1): 2+ design applications (2) Between a design application & a utility appl/patent"

Back

Notice of Appeal

Front

"-Ends time for filing response to FOA -Appeal brief must be filed w/in 2 mo of filing notice of appeal"

Back

Abstract

Front

"Accordingn to 112, abstract is a part of the application --> can be amended into spec/claims w/o new matter"

Back

Examiner's Answer (Appeals)

Front

"- Answer to Appeal brief - can reject based on new grounds (can reopen prosecution or maintain appeal and file a reply breif)"

Back

1.132 Affidavit

Front

"- provides proof of secondary consideration in 103 rejection - shows experimental results/explains something to an examiner - must be filed before FOA or notice of issue"

Back

Subsitute Specification

Front

"-PTO may require if amendments make it hard to examine or print - a marked up copy and statement of no new matter must accompany substitute spec"

Back

Payment of Issue Fee

Front

"Deadline to pay issue fee cannot be extended Issue fee paid after 3 mo is subjecct to standards as reviving an abandoned application UNINTENDED OR UNAVOIDABLE"

Back

Appeal Brief

Front

"-Must file w/in 2 mo of filing notice of appeal - extendable an additional 5 mo (up to 7 mo total) - Must include: (1) Identify real party in interest (if not included, PTO assumes it is inventor(s)) (2) realted appeals and intereferences (same owner, known to appellant, relate to / affected board decision in this case) (3) summary of claimed subject matter of each indpendent and depdnet claim argued sepearately (4) Arguments directed to each and every rejection (5) Appendix containig copy of claims appealed"

Back

RCE

Front

"- can use in Utility/plant filed after 6/8/95 - no fee - continued exam of sampe application - no further PTA accumulation against 3 yr pendency - responsive submission required"

Back

Reissue

Front

"After issue owner says patent is defective - can be fixed by correcting errors & examined like new appl - No Boradend Claims: owner/assignee can sign oath - Broadened Claims: All inventors must sign oath ** NO NEW MATTER Lack of enablement cannot be corrected by reissue Only owner can seek reisue Broadened claims must be filed w/in 2 years of issue **Amending has different annotation **Owner must provide offer to surrender original patent grant NO CONs"

Back

Withdrawal from Issue

Front

"-Can withdraw before payment of issue fee - Must show good & sufficient reasons - After issue fee is paid USTPO can withdraw for: (1) USPTO mistake (2) Violation of Duty to Disclose (3) Unpatentability of 1+ claims (4) Interference -Applicant can withdraw from issue w/ fee & petition: (1) for abandonment to consider IDS in CON/RCE (2) For unpatentability of claim - must include statemtn identifying unpatentable claims and how amendment fixes"

Back

Reasons for a FOA

Front

"Reasons for FOA: (1) Repeating Rejection previously made (2) Rejection necessated by an action of applicant ** TRUE EVEN IF FIRST RJECTION AFTER CON/SUBST"

Back

Applications that will not publish (filed after 11/29/00)

Front

"- applications no longer pending (eg, abandoned) - under secrecy order - provisionals - designs - applications icnluding request not to publish"

Back

Applications that will publish (filed after 11/29/00)

Front

"-new applications, except design - CONs -National stage applications **Filing RCE triggers publication"

Back

Jepson claim

Front

"-preable defines what is old, body defines what is new, transition phrase such as ""the improvement comprising"" - everything before the transition is prior art"

Back

Reply Brief (Appeals)

Front

"-Applicant has 2 mo following Examiner's answer to file reply breif - any extension must be for cause - until filing reply breif or end of 2 mo, board does not look at it. "

Back

Petition to make special

Front

"Appllications examined in 1st come 1st served, Can be taken up early w/ special situations: **NEVER A FEE FOR AGE (>65) OR ILLNESS NO MATTER THE FILING DATE (1) Before 8/25/06: - No Fee: serious Illness, inventor >65 yrs old, environ, energy, counterterrorism - Fee: prspective manufacture, infringement, dafter DNA, for the asking, HIV/AIDS, cancer, superconductivity, small entity biotech (2) On/After 8/25/06: - No fee for age/illness - Must meet 9 Conditions --> Look up!! MPEP 700 (3) Prioritized Exam, Effective 9/16/11 - pay for accellerated examination - get allowance or FOA w/in 1 year - Eligible: Non-provisional utility or plant; no more than 4 indpendent claims, no multiple dependent claims"

Back

CPA

Front

"- can use in any design application - Pay new app filing fee - responsive submission not required - CON app treated as a continued exam of the same application - can file DIV CPA, no CIPs"

Back

What due dates cannot be extended, even for cause

Front

"(1) IDS (2) Date set by statue (3) Issue Fee - Can be paid late, not extended, fee applies (4) 3 mo deadline to file for refend paid as large entity (5) Filing of formal drawings at time issue fee is paid"

Back

Rivial of abandoned applications

Front

"- Intentionally abandoned cannot be revived - no time limit on revival (before 12/1/97 - 1 yr) - unintentional revival must be accompanied by: (1) required reply or fee if abandoned by failure to pay a fee (2) Revival fee (3) Statement that entire delay was unintentional (4) Any necessary terminal disclaimer"

Back

Design Patent Term

Front

15 years from issue

Back

Oral Hearing (Appeals)

Front

"- can request w/in 2 mo of examiner's answer sent - extended only for cause - if not requested, appeal is decieded upon the papers"

Back

Amendments after filing appeal

Front

"-may only cancel claims that do not affect other claims or rewrite depednet claims in independent form - must show good cause and overcome all outstanding rejections and be filed before appeal brief"

Back