MPEP Q & A 198: Items Necessary to Accord the International Filing Date the Date of Receipt of the International Application

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Question:

What does the Office need at the time of receipt in order to accord the international filing date the date of receipt of the international application?

Answer:

The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that the Office has found that, at the time of receipt:

(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,

(ii) the international application is in the prescribed language,

(iii) the international application contains at least the following elements:

  • (a) an indication that it is intended as an international application,
  • (b) the designation of at least one Contracting State,
  • (c) the name of the applicant, as prescribed,
  • (d) a part which on the face of it appears to be a description
  • (e) a part which on the face of it appears to be a claim or claims.

Chapter Details:

The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1810 of the MPEP.  The following is a brief summary of section 1810.

1810 Filing Date Requirements

An international filing date is accorded to the earliest date on which the requirements under PCT Article 11(1) were satisfied. If the requirements under PCT Article 11(1) are not satisfied as of the date of initial receipt of the international application papers, the receiving Office will invite applicant to correct the deficiency within a set time limit.

The USPTO is also not competent to receive international applications that are not in the English language and, upon payment of a fee equal to the transmittal fee, the USPTO will forward such applications to the International Bureau provided they are in a language accepted by the International Bureau as receiving Office.

MPEP Q & A 197: What Must a Petition for an Unintentionally Delayed Claim be Filed With?

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Question:

What must a petition for an unintentionally delayed claim be filed with?

Answer:

A petition for an unintentionally delayed claim must be accompanied by:

  • (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior application (unless previously submitted);
  • (B) a petition fee under 37 CFR 1.17(m); and
  • (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

Chapter Details:

The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types and Status of Application; Benefit and Priority Claims.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 211.04 of the MPEP.  The following is a brief summary of section 211.04.

211.04 Delayed Benefit Claims

This section outlines delayed benefit claims. For instance, if the reference required by 35 U.S.C. 120 and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed. Also included is a delayed submission of benefit claims in international applications.

MPEP Q & A 196: Submission of Petition to Withdraw Application from Issue Under 37 CFR 1.313(c)

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Question:

How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO?

Answer:

Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be:

  • (A) mailed to “Mail Stop Petition, Commissioner for Patents”;
  • (B) transmitted by facsimile;
  • (C) hand-carried to the Office of Petitions; or
  • (D) filed via EFS-Web as an ePetition.

Chapter Details:

The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers Allowance and Issue.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1308 of the MPEP.  The following is a brief summary of section 1308.

1308 Withdrawal From Issue

This section covers the withdrawal of an application from issue. Specific topics discussed include the withdrawal from issue at the initiative of the applicant both prior to and after the payment of the issue fee.  Withdrawal from issue at the initiative of the Office is also covered.

MPEP Q & A 195: Necessary Items for a Petition for Retroactive License

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Question:

What should a petition for retroactive license include?

Answer:

A petition for retroactive license shall include:

(1) A listing of each of the foreign countries in which the unlicensed patent application material was filed,

(2) The dates on which the material was filed in each country,

(3) A verified statement (oath or declaration) containing:

  • (i) An averment that the subject matter in question was not under a secrecy order at the time it was filed abroad, and that it is not currently under a secrecy order,
  • (ii) A showing that the license has been diligently sought after discovery of the proscribed foreign filing, and
  • (iii) An explanation of why the material was filed abroad through error without the required license first having been obtained, and

(4) The required fee of this chapter.

Chapter Details:

The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 140 of the MPEP.  The following is a brief summary of section 140.

140 Foreign Filing Licenses

This section covers both expedited foreign filing licenses and retroactive licenses. Essentially, if an inventor files a patent application in the U.S., he or she may not file the same application in a foreign country prior to the passing of six months without first obtaining a foreign filing license. If the inventor files in a foreign country before the 6 month waiting period has passed without getting a license first, he or she must immediately file for a retroactive license.

MPEP Q & A 194: Stop the Publication of an Application

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Question:

Can a petition under 37 CFR 1.138(c) stop publication of an application?

Answer:

A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in sufficient time to avoid publication of the application. The petition will be denied when it is not recognized in time to avoid publication.

Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication. It is unlikely that a petition filed within four weeks of the projected date of publication will be effective to avoid publication. Also note that withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of an application under 35 U.S.C. 122(b).

 

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 711.01 of the MPEP.  The following is a brief summary of section 711.01.

711.01 Express or Formal Abandonment

This section discusses the details of express or formal abandonment. For instance, the applicant or the attorney/agent of record, if any, can sign an express abandonment. Details are provided where a letter of express abandonment is being submitted in an allowed application after the payment of the issue fee, to avoid publication of an application, to obtain a refund of the search and excess claims fee, and an application in interference.

MPEP Q & A 193: Petition to Make Special and Energy Resources

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Question:

Does the petition to make special apply to patent applications for inventions dealing with energy resources?

Answer:

The U.S. Patent and Trademark Office will, on petition, accord “special” status to all patent applications for inventions which materially contribute to:

  • (A) the discovery or development of energy resources, or
  • (B) the more efficient utilization and conservation of energy resources.

Examples of inventions in category (A) would be developments in fossil fuels (natural gas, coal, and petroleum), hydrogen fuel technologies, nuclear energy, solar energy, etc. Category (B) would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. Any petition to make special filed under this subsection must comply with the requirements.

All applicants desiring to participate in this program should petition that their applications be accorded “special” status. The petition must state that special status is sought because the invention materially contributes to category (A) or (B) set forth above. No fee is required for such a petition.

If the application disclosure is not clear on its face that the claimed invention materially contributes to category (A) or (B), the petition must be accompanied by a statement by the applicant, assignee, or an attorney/agent registered to practice before the Office explaining how the materiality standard is met.

The materiality standard does not permit an applicant to speculate as to how a hypothetical end-user might specially apply the invention in a manner that could materially contribute to category (A) or (B). Nor does such standard permit an applicant to enjoy the benefit of advanced examination merely because some minor aspect of the claimed invention may be directed to category (A) or (B).

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 708.02 of the MPEP.  The following is a brief summary of section 708.02.

708.02   Petition To Make Special

By filing a petition to make special, the examination process for the application will be considerably sped up. This section covers details of a petition to make special. The specific instances where petitions to make special may be used include; the applicant’s health, applicant’s age, environmental quality, energy, and inventions for countering terrorism. Each of these is discussed along with the handling of petitions to make special or requests for advancement of examination.

MPEP Q & A 192: Overcome Provisional Obviousness Rejection

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Question:

How can a provisional obviousness rejection be overcome?

Answer:

A provisional obviousness rejection can be overcome by:

  • Arguing patentability over the earlier filed application;
  • Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications
  • Filing an affidavit or declaration under 37 CFR 1.132 showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention “by another”;
  • Filing an affidavit or declaration under 37 CFR 1.131(a) showing a date of invention prior to the effective U.S. filing date of the copending application.
  • For an application that is pending on or after December 10, 2004, a showing that (1) the prior art and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person, or (2) the subject matter is disqualified under pre-AIA 35 U.S.C. 103(c) (i.e., joint research agreement disqualification).

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 706.02(k) of the MPEP.  The following is a brief summary of this section:

706.02(k)  Provisional Rejection (Obviousness) Under 35 U.S.C. 103 Using Provisional Prior Art Under Pre-AIA 35 U.S.C. 102(e)

This section covers a provisional rejections under 35 U.S.C. 103 using provisional prior art under pre-AIA 35 U.S.C. 102(e). There is an overview of the historical background including a discussion of the CREATE Act.

Provisional obviousness rejections are discussed in detail. Where two applications of different inventive entities are copending, not published, and the filing dates differ, a provisional rejection under pre-AIA 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) should be made in the later filed application unless the application has been excluded under pre-AIA 35 U.S.C. 103(c). Otherwise the confidential status of unpublished application, or any part thereof, must be maintained.

In addition, so long as the applications have at least one inventor in common and the other requirements are met, the Office will permit a claim for 35 U.S.C. 120 benefit without any additional submissions or notifications from applicants regarding inventorship differences.

MPEP Q & A 191: Final Rule in the Changes to the Claim Construction Standard

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Question:

What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” state?

Answer:

In this final rule, the Office revises the rules to provide that a patent claim, or a claim proposed in a motion to amend, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.

  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • This change replaces the BRI standard for construing unexpired patent claims and proposed substitute claims in IPR, PGR, and CBM proceedings with the federal court claim construction standard, which is articulated in Phillips and its progeny.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a brief summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 190: AIA Proceeding Expenses Under Phillips

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Question:

Have parties to AIA proceedings under Phillips required expanded page limits or otherwise incurred more expenses in their AIA trials than parties in AIA proceedings under BRI?

Answer:

PTAB has not found that parties to these AIA proceedings under Phillips require expanded page limits or otherwise incur more expense in their AIA trials than parties in AIA proceedings under BRI.

  • The USPTO’s experience is that arguments under Phillips are not more complicated or more lengthy than arguments under the BRI standard.
  • Rather, both standards are familiar to patent practitioners appearing before the USPTO and district courts.
  • Consequently USPTO expects that these proceedings utilizing the Phillips standard will operate procedurally in much the same way as BRI proceedings using the BRI standard, that they will cost USPTO and parties no more to conduct, and that they will be completed within the statutory deadline.
  • In sum, the direct result of USPTO changing the claim construction standard argued in some AIA trials from one well-known standard to another well-known (as noted, a standard already used in some AIA trials) will not have direct economic impacts.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a brief summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

  • In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
  • This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
  • The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

MPEP Q & A 189: Issuance of NIRC Action in Inter Partes Reexamination Proceeding

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Question:

Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding.

Answer:

The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding:

  • There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment.
  • After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal.
  • After filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete).
  • After a final decision by the Board, where there is no further timely appeal to the Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board.
  • After the Federal Court appeal process has been completed and the case is returned to the examiner.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter Partes Reexamination.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2687 of the MPEP.  The following is a brief summary of this section:

2687  Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding

Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable.

This section covers further details on the NIRC such as instances where a NIRC would be appropriate, preparation of the NIRC action, examiner’s amendment to place the proceeding in condition for notice of intent to issue an inter partes reexamination certificate, reasons for patentability and/or confirmation, preparation of the case for publication, and reexamination proceedings in which all the claims are canceled.