Archive for category: MPEP Q and A Podcast

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Question:

Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)?

Answer:

Yes, a dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d).

When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim.

Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. A mere difference in scope between claims has been held to be enough.

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 706.03(k) of the MPEP.  The following is a brief summary of section 706.03(k).

706.03(k) Duplicate Claims

A dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d).

When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.

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Question:

Is a drawing an essential element of a design patent application?

Answer:

Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture.

The design must be represented by a drawing that complies with the requirements and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.

Chapter Details:

The answer to this question can be found in chapter 1500 of the MPEP. This chapter covers Design Patents.

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 1503.02 of the MPEP.  The following is a brief summary of section 1503.02.

1503.02 Drawing

This section covers drawings in design patent applications. It covers topics such as views, the use of surface shading and surface treatments, using broken lines, and photographs and color drawings. For instance, drawings are normally required to be submitted in black ink on white paper.

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Question:

What is the difference between applicant information, correspondence information, and application information?

Answer:

Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( when dealing with pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. (If the applicant is not an inventor, this information also includes the applicant’s authority (pre-AIA 37 CFR 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor. The “mailing address” is the address where applicant customarily receives mail.

Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (when dealing with pre-AIA 37 CFR 1.33(a)).

Application information includes the title of the invention, a suggested classification by class and subclass, the Technology Center (TC) to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Application information also includes whether the application discloses any significant part of the subject matter of an application under a secrecy order.

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application.

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 601.05(b) of the MPEP.  The following is a brief summary of section 601.05(b).

601.05(b) Application Data Sheet (ADS) in Application Filed Before September 16, 2012

This section covers details about an application date sheet (ADS) in applications filed before September 16, 2012. Topics covered include supplemental application data sheets and their submission and treatment of inconsistent information.

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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.

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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.