Section 1
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Pre-AIA 102(c)
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Last updated
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Date created
Mar 1, 2020
Cards (92)
Section 1
(50 cards)
Pre-AIA 102(c)
inventor abandoned the invention (abandonment must be intentional)
Pre-AIA 102(g)
"(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"
Continuation in part Application
"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"
Certificate of Mailing
"- Rule 1.53(b) & Rule 1.53(d) --> date received at PTO - Notice of Appeal & Amendment --> Date deposited in post office"
35 USC 120
"Provisional Priority - can ask for provisional filing date if less than 12 mo has passed since provisional filing --> no provisionals for design applications"
AIA 102(b)(2)
"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)"
Pre-AIA oath requirements
"(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"
Continuation Application
"Original and CON are ""co-pending"" Repeats everything from parent but removes anything already allowed/issued"
When do applications publish?
"- 18 mo after filing - design patents do not publish"
AIA 102(b)
Defines exceptions to prior art
AIA 102(a)
defines the scope of prior art
Attorney withdrawal of Power of Attorney
"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"
All filings are dated the date received at the PTO
Client Revocation of Power of Attorney
"Client can revoke at any time effective as of date received at USPTO"
Pre-AIA 102(d)
"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"
Necessary to receive filing date (non-provisional)
"- Specification - Claim - Any required drawings"
112(f)
"Means + Function Ex: An apparatus comprising: a workpiece holder; an ion source; and means for cooling the workpiece during cooling"
Facsimilie
"-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"
AIA 102(d)
"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"
Substitute Statement
"- 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"
Pre-AIA 102(a)
"before the date of the invention by another: - invention was known/used in USA - patented anywhere - published anywhere"
AIA 102(a)(1)
"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"
Requirements for Recording Assignments
"(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"
Federal Express
All filings are dated the date received at the PTO
Term
Definition
Restoration of Priority
Can restore rights upto 2 extra months (14 mo from priroty date) if failure to file was unintentional
Express Mail
All filings are dated "Date In"
Pre-AIA 102(f)
Bars patenting subject matter which applicant did not invent
Supplemental oath
"submitted to replace defective oath/dec matter of right - can be filed even after allowance"
AIA 102(c)
"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."
AIA 102(b)(1)
"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"
Utility Application
examined and must be issued or abandoned in its due course
Small entity
"(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"
Pre-AIA 102(b)
"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"
Substitute Application
"original and Substitute are NOT copending same disclosure as earlier application"
Microentities
"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"
1.131 Affadavit
"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"
35 USC 119
Foreign Priority - can ask for foreign filing date if less than 12 mo has passed since foreign filing
divisional Application
"Original and DIV are ""co-pending"" Later app for distinct & independent invention carved out of parent application"
Notice of Omitted Items
"- 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"
Bridging Applications
"- 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)"
Access: pending / abandoned
"- each inventor named in app (even if filed w/o inventor signature) - Assignee of entire/partial interest or exclusive licensee -Attorney/Agent of record"
AIA 102(a)(2)
"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"
Access: unpublished abndoned files
"-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"
Access: Unpublished pending
"-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"
Post AIA oath requirements
"(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"
37 CFR 1.130
"Affidavit to overcome prior art rejections: - 1.130(a) - exception of inventors own work - 1.130(b) - exception of 3rd party intervening disclosure"
Notice of Missing Parts
"- no rights are in jeopardy - must respond by filing/paying fee/oath/translation - filing date will not change - no opossibility to change filing date"
Pre-AIA 102(e)
"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"
Foreign Priority
"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"
Section 2
(42 cards)