PRI Review

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PRI review I. Overview a. Law of expected return: (not necessarily precise) EX = [PX * fX] where i. EX is expected return ii. PX is probability of success of litigation iii. FX is total amount paid for successful litigation iv. IF EX IS GREATER THAN THE COST OF LITIGATION INFRINGE AWAY! b. Assignment: transfer of all rights of a patent to assignee/ transfer of property c. License: allows others to use/sell/import patented invention BUT licensee doesnt have the power of exclusion i. Exclusive license: only 1 licensee is allowed d. General format of a patent i. Title ii. Abstract iii. Drawings iv. Specification: As specific as possible goal is to help the reader understand (consistency of terms is important) v. Description: Should be readable by any person skilled in the art 1. Write for judges who will most likely not be very tech saavy vi. Claims: anywhere from 1 to 20 e. 35 USC 112 Specification: the specification must: i. Describe the invention in writing ii. Enable a person skilled in the art to make/use the invention iii. Set forth best mode contemplated by the inventor for carrying out the invention 1. best mode of carrying out the invention as known by the inventor at the time of filing f. Claims: Are they valid? Ask: i. Does everything recited in the claim appear in the item of prior art, alleged infringing device, or disclosure under consideration 1. If yes then the claim is anticipated ii. Claim preamble: not especially important UNLESS: 1. The preamble breathes life and meaning into the claim a. i.e. preamble uses a specific term then it may be legally limiting 2. Jepson claim preamble: includes prior art in the body of the claim = DUMB

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a. In a device [or method] having elements [or steps] A, B, and C {prior art references} the improvement comprising element [or step] X i. Combination of preamble/claim that is considered part of the claim body iii. Doctrine of equivalence: if a claim is not literally infringed, infringement may still occur if: 1. The 2 devices/ processes/ or compositions carry out substantially the same function in substantially the same way to produce substantially the same result 2. Did the infringer intentionally design around the invention? 3. Doctrine of equivalence is subject to some debate a. Are you supposed to go claim by claim? OR b. Look at the invention as a whole i. This has been determined to be less important than considering the facts at hand (case by case analysis trumps) iv. Means plus Function: a broader method of writing claims that allows for greater claim protection via less specificity 1. 35 USC 112 6: limits the claims to those structures which are equivalent to those disclosed in the specification a. New equivalence under 35 USC 112 6: if function of a means clause reads upon prior art elements the examiner will be able to establish prima facie showing of equivalence i. THEN the burden to show novelty/ nonobviousness shifts to the applicant v. Prosecution history estoppel: used in opposition to a patentee s attempt to vary the literal claim language to cover the alleged infringing device 1. The burden of proof is on the accused infringer Date of Invention (descending latest to earliest date) a. day of filing US Patent i. constructive reduction to practice: presumptively complete disclosure and definition of the invention exists b. Effective earlier filing date from foreign or domestic priority i. Foreign: inventor filed the same invention in a different country ii. Domestic: 1. continuing application: inventor filed earlier application for the same invention 2. provisional application: satisfies enablement, description, and best mode requirements

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iii. Actual reduction to practice: inventive concept is embodied in physical form and demonstrated to be workable for its intended purpose 1. Normally need a witness who understands the art encompassed in the invention iv. Conception: formation of the complete operative invention in the inventors mind always determines inventorship 1. UNTIL NEW MPEP IS RELEASED 2. Needs a witness to read the recorded idea a. Not necessarily one who is skilled in the art b. Disclosure document program: PTO serves as a witness to conception Claims: In general you want to go as broad as is allowable while still distinguishing your invention from the prior art a. Independent claims: able to stand alone i. Should be the broadest statement of what the invention encompasses ii. Specificity is provided by the dependent claims b. Dependent claims: proper dependent claim is, and must be, narrower than the claim from which it depends i. Lots of restatements are a good way of covering your claims, so that if independent claim 1 is rejected claim 2 still restates 1 and is valid ii. Limitations/elements are used to narrow a claim further c. Claim differentiation: when 2 claims in the same patent have similar or identical meaning, an effort should be made to adapt an interpretation that will give them a different meaning d. Dominant/ subservient claim: claim that is narrower by virtue of additional elements or qualifications of elements is typically viewed as an improvement and is subservient to the broader (dominant) claim e. Subcombination/ combination: narrowing of these types of claims can only occur by adding more elements to the claims i. Subcombination: fewer elements ii. Combination: more elements f. Genus-Species: generic claim must accomadate all potential variations/ iterations of invention (species) i. NOT INDIVIDUAL CLAIMS REFERS TO INVENTIONS g. Markush Group: (often used with chemical compositions) an artificial generic expression that provides generic coverage when: i. There is no true generic term covering all the elements ii. Use of means plus function is inappropriate iii. Several elements function equivalently in the invention

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h. Improvement patent: issued later than a dominant patent, tends to build upon the previously disclosed (or claimed) invention i. Product by process claims: (normally for chemicals) product claimed by defining the process by which it was made j. New use claim: same rules as other claims discussed above i. Be broad about the new use specifically 1. What else could be done with this new use? k. New compound claim: use the following language: i. A compound having the formula OR ii. A surface active agent of the formula 35 USC 102 Novelty requirement: invention must be something new or novel relative to the prior art a. In general: i. material unpublished in abandoned applications is available through the PTO and constitutes prior art if referred to in an issued patent 1. Same thing with cancelled material ii. Pending applications cannot be cited as prior art 1. Unless 102[E](1), then judge will delay prosecution in the laterfiled patent iii. The party attacking the validity of the patent must prove their facts by clear and convincing evidence iv. If the applicant wants to use as published prior art something that wasnt prior the burden rests with the applicant to show the document is not prior in actuality b. In grouped form: i. [AGE] = Novelty: if certain novelty-defeating events took place prior to applicant inventing the invention sought to be patented, then no valid patent may issue 1. US v foreigners (time of conception v. first to file) ii. [BD] = Filing date: 1 yr. prior to filing date if invention was around/ public/ invented over 1 yr. before the filing date the applicant is barred from filing in the US 1. This is a stick as opposed to a carrot iii. [FC] = Misc.: see below c. Sequentially, in detail: i. [A]: If known or used by others IN THIS COUNTRY or patented or described in a printed publication anywhere in the world No patent shall be issued ii. [B]: Public use or on sale in this country also follows the critical date of 1 yr. before filing

iii. [C]: If the inventor abandoned the invention (i.e. discloses invention in a patent that is not claimed) PTO will regard as abandonment iv. [D]: When the US applicants foreign patent issues before the US filing date and when the foreign application upon which it was based was filed more than 12 months before the US filing date, the patent is barred (6 months for a design patent) v. [E](1): the published application is prior art when issued; published application is prior art for whatever it does disclose as of its filing date even if no patent is issued 1. [E](2): Patent reference becomes prior art when the application was filed NOT when it issues unless initially filed with the PCT, then the reference is prior art when issued a. NEW BILL HR 4870 WILL CHANGE THIS PART OF THE STATUTE SIGNIFICANTLY vi. [F]: If applicant for a patent did not himself invent the subject matter sought to be patented then he/ she is not entitled to a patent vii. [G]: Did somebody else invent X before you with respect to: 1. Reduction to practice 2. First to conceive 3. Abandonment 4. Suppressed OR 5. Concealed? d. Teachings of prior art: disclosure requirements of a reference may be met even though some experimentation may be required to practice the invention unless experimentation is undue i. as determined by the: 1. Quantity of experimentation necessary 2. Amount of direction/ guidance provided in the disclosure 3. Presence or absence of working examples 4. Nature/ complexity of the invention 5. State of the prior art 6. Relative skill of those involved in the art 7. Predictability of the art 8. The breadth of the claims ii. Plant/ chemical/ electrical/ mechanical patent cases: a picture of the plant will not be considered enabling 1. Must teach how to make and use the claimed invention 2. Secret processes will not count as prior use as long as they are done in secret a. No public knowledge

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35 USC 103 Nonobviousness: focus on prior art to establish obviousness a. Courts must marshal all the evidence before deciding whether a particular invention is obvious or not obvious b. If the invention is new/useful/ novel ask: i. Is a combination of old elements really present? 1. If so, does the combination of old elements produce a new or different function? (not just a different result?) ii. How new, How unexpected, How different, How much synergism must exist in a combination of old elements case as contrasted with patentable inventions that are not combinations of old elements? c. Graham Factors of federal standards: i. Scope and content of the prior art ii. Differences between claimed invention and prior art iii. Level of ordinary skill in prior art; determined by 1. Educational level of the inventor (which is debateable) 2. Type of problems encountered in the art 3. Prior art solutions to these problems 4. Rapidity with which innovations are made 5. Sophistication of the technology 6. Education level of active workers in the field (excluding the inventor) iv. Secondary considerations 1. Commercial success 2. Long-felt but unsolved needs 3. Failure of others 4. Others dont infringe or take licenses 5. Others copy the invention 6. Disbelief of those skilled in the art that the invention worked d. Single reference standard: (not 102, only 103) Are the missing info/references obvious to a skilled observer? e. Prima facie obviousness: the assertion of obviousness (in single or plural art situations) if reasonable in light of what prior art substantively shows/teaches i. obvious to try: modification or combination, looking for a needle in a haystack is not prima facie obviousness f. 103 rejection based on modification of a reference that destroys the intent, purpose, or function of the referenced invention is not proper g. Nonanalogous art: if the inventor pulls together 2 subjects that a person of ordinary skill in the art could not foresee it will defeat prima facie obviousness h. A patentable invention may lie in the discovery of the source of a problem, even though the remedy may appear obvious after the fact

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i. Determine the scope/ contents of the prior art ii. Ascertain the differences between the prior art and the claims at issue iii. Resolve the level of ordinary skill in the pertinent art iv. Evaluate the evidence of secondary considerations Continuing applications: obtaining the benefit of the filing date of an earlier application may be crucial to success in obtaining a valid US patent a. 3 ways to do that are: i. Application is a continuing application under 35 USC 120 of an earlierfiled nonprovisional US application ii. Application is entitled to a right of priority under 35 USC 119(a) [foreign application] iii. Application is entitled to a right of priority under 35 USC 199(e) [domestic application] b. Types of continuations i. Continuation ii. Divisional iii. Continuation in part c. Continuation Application i. Contains: 1. The same disclosure as its parent application a. No new matter 2. Claims the same invention as the parent claims ii. 2 most typical situations in which to file a continuation: 1. PTO has finally rejected all of the claims in the original application and applicant isnt ready to appeal the rejection 2. PTO has allowed some of the narrower claims, but finally rejected the broader claims a. Applicant will file continuation application with the broad previously rejected claims, perhaps to sue or ward off infringers, and still pursue the rejected broad claims b. Effective filing date will be the filing date of the parent resulting in 2 patents with the same filing date d. Divisional application i. Continuing application that separates parent application 1. Discloses 2 or more inventions ii. PTO issues a restriction requirement: applicant chooses which invention to keep and files a divisional application for the other 1. Effective filing date of the divisional will be the filing date of the parent a. Divisional application may be filed voluntarily by applicant

e. Continuation-in-part application: new and old subject matter disclosed/ not disclosed in the patent i. i.e. applicant conceives of an improvement or variation to invention, continuation-in-part application will ostensibly protect ii. continuation-in-part application MAY contain 1. claims directed solely to commonly-disclosed subject matter a. and additional claims reciting a feature of newly-added subject matter 2. only claims reciting features of newly-added subject matter 3. only claims directed to the commonly disclosed subject matter a. FOR 1 AND 2 ABOVE EFFECTIVE FILING DATE WILL BE DATE CIP IS FILED f. Requirements for continuing applications i. Continuity of disclosure 1. Any claim in a continuing application must satisfy these requirements a. Written description b. Enablement c. Best mode requirements of 35 USC 112 for the claimed invention i. What if better mode becomes available/ known in between filing the parent application and the continuation/ divisional application? 1. It cant be disclosed because disclosure would be considered new matter 2. Same situation as above but with a Continuation-in-part application a. Old claims do not require disclosure b. New claims do require disclosure of new best mode 2. Filing a continuation-in-part application in response to a 35 USC 112 rejection or New matter rejection used to prevent applicant from claiming earlier filing date; a. NOW: if the applicant can show filing was due to proper reasons such as a desire to disclose improved embodiments developed since filing, but were not required to support claims of the earlier application 3. In filing a divisional application, applicant may choose to eliminate certain disclosure information from the original application

a. Applicant cant still rely on the original filing date as long as claims are supported by both disclosures 4. If supplemental material is required to support continuing claims, application becomes a continuation-in-part application with: a. Supported claims having the original filing date and claims needing supplemental disclosure have continuation-in-part application filing date 5. If continuing application claims are broader than parent claims: a. If original application hasnt been finally rejected by the PTO applicant may file amendment broadening application claims b. If original application is patented applicant may file a broadened reissue application under 35 USC 252 within 2 years of issue without deceptive intent c. If original application is not a patent, applicant can file a continuing application with both broad and narrow claims included d. If original application isnt a patent and broad/ narrow claims differ substantially, then the applicant can file a continuation with broadened claims 6. Which of 35 USC 112 do I use as a limitation on the breadth of a claim? a. Most likely you will use the 2nd to control, unless a notable decision is cited i. If 1st original filing date for claim in issue is lost forever ii. If 2nd , then claim can be preserved by filing continuing application 7. EXAMPLE: Original application has A, B, C inventions; a. 2nd application = proper division: describes A b. 3rd application with same disclosure as original wont fly after: i. The original was abandoned ii. 1 year after inventors printed publication of embodiments of B/ C ii. Continuity of inventorship: need at least 1 common inventor in subsequent continuing applications 1. EXCEPT if as a result of a restriction requirement and the filing of a divisional application the inventive entities in the parent and

divisional applications end up being entirely different, then the continuity of inventorship will be satisfied a. As long as there is one inventor in the divisional who was an inventor in the originally filed patent iii. Continuity of prosecution: applicant must have at least one application pending before the PTO when filing a continuation iv. Later application must contain a specific reference to an earlier filed application 1. Reference must be made in either: a. Application data sheet b. 1st sentence of the specification of the application g. Mechanisms for filing continuing applications: i. 37 CFR 1.53(b) a standard patent application must include: 1. Specification complying with 35 USC 112 2. At least 1 claim 3. Drawing(s) if necessary 4. An oath/ declaration 5. The prescribed fee ii. Continued prosecution applications: 37 CFR 1.53(d) 1. May only be filed in a utility plant application only if its parent was filed before May 29,2000 2. Important attributes of continued prosecution applications: a. continued prosecution application can only be filed if requisite filings in the parent application have been completed b. No copies of the specification, claims, or drawings from the parent application are submitted with continued prosecution application filing c. continued prosecution applications file jacket, content, serial # are those of its parent d. filing a continued prosecution application constitutes a request to expressly abandon the parent as of the continued prosecution applications filing date i. if the applicant is unwilling to abandon the parent only 37 CFR 1.53(b) procedures may be used to file e. inventors named in the continued prosecution application must be the same as or fewer than the inventors named in the patent

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f. No new application # for the continued prosecution application, it may be filed in the same tech. center as its parent application i. No need to go through the OIPE ii. Can be hand delivered or faxed g. continued prosecution applications are treated by examiners as amended applications as opposed to new ones i. which means that they have shorter prosecution times h. 37 CFR 1.53(b)/(d) both permit multiple inventors to be named in the same application BUT i. In (b) you can file a continuation-in-part or add inventors h. Effective date as a reference of a patent issuing from a continuing application i. Continuation/ divisional: filing date of the parent ii. continuation-in-part application: if new matter is needed for the purpose of rejecting the applicants claims, then the reference continuation-in-part patent is not effective as a prior art reference as of filing of parent application Continued Examination: must file a submission and pay X fee a. Procedures/ limitations: i. Submissions required to initiate continued examination: 1. Fee 2. Submission: a. information disclosure statement b. amendment to the written description c. claims OR d. drawings e. new arguments OR f. new evidence in support of patentability ii. time requirements for requesting continued examination: available only: 1. after prosecution has been closed 2. before any of the following has occurred: a. payment of the issue fee is granted b. abandonment of the application c. filing of notice of appeal to fed. Circuit d. commencement of a civil action against the director to have the patent issued iii. types of applications for which continued examination is available

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1. available for nonprovisional utility and plant applications both national and international 2. Not available for: a. Provisional applications b. Utility or plant applications c. International applications filed before June 8, 1995 d. Application for design patents e. Patents under reexamination iv. If reply to an office action is outstanding, submission filed as part of the request for continued examination must be timely filed and must meet the requirements of rule 1.111 (discussed later) v. Effect of continued examination on pending appeal: 1. File request for continued examination after filing of notice of appeal to PTO board of appeals BUT prior to a decision on the appeal, will be considered a request to withdraw the appeal and to reopen prosecution of the application with the examiner 2. File request for continued examination after decision by board of patent appeals BUT prior to the filing of a notice of appeal to Fed. Circuit OR commencement of a civil action under 35 USC 145/146 will result in finality of rejection being withdrawn and submission being considered 3. Continued examination is not available if the application is under appeal to the Fed. Circuit OR is the subject of a pending civil action under 35 USC 145/146 unless the appeal or civil action is still pending vi. There is no limit on the number of continued examinations in an application vii. continued examinations after allowance: 1. if desired to continue examination after the issue fee has been paid and the application has been sent to issue, the applicant must file petition to withdraw plus pay a fee a. NO PETITION REQUIRED if requested prior to payment of issue fee Res Judicata in continuing applications and continued examination practice a. I.E.: A wins suit against B; B brings new suit against A over same issues A can use Res Judicata as an absolute defense i. No relitigation of claims already resolved by the court b. Res Judicata in continuing applications i. Use is very restricted in this context

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ii. The PTO will not reject an application on the basis of res Judicata except when the claims in question have been the subject of an earlier adverse decision of the board of appeals or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision c. Res Judicata in continued examination practice i. Res Judicata will be invoked unless the applicant can show an amendment or some new submission of evidence Classification of patent applications a. By subject matter: i. Utility application (35 USC 101): mechanical, electrical, chemical, or biotechnology applications process v. product patents ii. Design application (35 USC 171): ornamental design for an article of manufacture iii. Plant applications (35 USC 161): describes and claims new, asexually reproduced plant varieties 1. Subject matter in this case is the plant itself iv. Plant variety protection: describes/ claims of sexually reproduced or tuber propagated plant varieties b. By number of applicants: i. 1 applicant: sole applications ii. 2 or more applicants: joint applications c. Classification in relation to other applications: i. Original application: 1st in a series of related applications 1. May be a 1st filing or a continuing application ii. Parent application: earlier application of an inventor disclosing a given invention iii. Continuing application: applications classified according to their relationships to other applications iv. Provisional application: filed for the purpose of establishing an earlier filing date v. Nonprovisional application: regular application 1. Anything that isnt provisional vi. Reissue application: sometimes patent is discovered to be substantially inadequate or defective Priority a. Foreign priority 35 USC 119(a): earlier filed application is an application for patent/ inventors certificate filed in a foreign country once right is perfected applicant can use the foreign filing date as evidence of the date of invention (used against 35 USC 102)

i. Requirements for securing foreign priority: 1. Country must be recognized party to treaty or WTO member 2. Invention/ inventors must be the same between foreign patent and US patent 3. Invention claimed in the US application must be disclosed in the foreign application 4. US application must be timely filed 5. Claim for priority and the required submissions must be timely filed a. Utility application: 12 months b. Design application: 6 months ii. Effects of foreign priority: remove from the body of prior art events that might otherwise defeat patentability that occurred between the foreign and US filing dates 1. Relationship between foreign priority and 35 USC 102 (b)/(d) a. 35 USC 102(b) type statutory bars are measured from the actual US filing date and not from the effective filing date derived from foreign priority b. Foreign filing that generates a 35 USC 102(d) bar cant be the basis for 35 USC 119(a) foreign priority 2. Relationship between foreign priority and 35 USC 104 a. 35 USC 104 used to be very restrictive i. Its power has been reduced by treaties ii. Foreign priority under 35 USC 119(a) will continue to be important to establishing earlier dates to overcome prior art 3. Effective date as a reference of a US patent or published application entitled to foreign priority: foreign priority cant be used by others for any purpose AND it cant be used by inventors or their assigns for defeating the patent rights of others a. Litigants cant use the foreign priority date to invalidate the patent of a 3rd party b. USPTO examiners cant use such a foreign priority date to reject the patent application of a 3rd party c. An earlier foreign filing date secured under 35 USC 119(a) doesnt create an earlier effective date when treating the patent or published application as a prior art reference i. An earlier foreign filing date under 35 USC 119(a) is usable only by the applicant to obtain his or her own patent

b. Domestic priority 35 USC 119(e): obtaining the benefit of an earlier filing date i. US provisional application: 1. Typical practice: file provisional application; within 12 months file regular application a. Changed by the URAA (Uruguay Round Agreements Act) which resulted from a WTO meeting i. Big change in patent law: term of a patent is from the date of issuance of the patent, not the date of filing [i.e. 20 years] ii. 3 procedures for obtaining a US patent stemming from a provisional application: 1. File provisional application 1st: file separate nonprovisional application within 12 months of provisional filing date, claiming priority based on the provisionals filing date 2. File nonprovisional application 1st, within 12 months convert nonprovisional application to provisional application and within 12 months of filing the 1st application file a nonprovisional application based on the 1st applications filing date 3. File provisional application 1st and within 12 months convert provisional application to nonprovisional application iii. Required contents of a provisional application: 1. Authorization: allowed by inventor 2. Claim: not actually required 3. Fee: must pay in order to play 4. Filing date: date on which specification and any required damage are received in the PTO 5. Abandonment: without special request the provisional application will be regarded as abandoned 12 months after the filing date of such application 6. No right of priority/ benefit of earliest filing date 7. A specification that meets the requirements of 35 USC 112 8. A drawing a. (No oath or claims are required) iv. Converting a nonprovisional application to a provisional application: 1. Must be filed before abandonment of application PLUS a. Payment of the issue fee b. Expiration of 12 months from the filing date of the application OR c. Filing of a request to convert the application to a statutory invention registration WHICHEVER OCCURS 1ST

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v. Converting provisional application to a nonprovisional application 1. requires: a. Request for conversion b. Conversion fee c. Amendment including at least 1 claim, unless a claim is already present in the application 2. Subsequent nonprovisional application is entitled to the benefit of the earlier filing date of the provisional application if: a. Nonprovisional application is filed no later than 12 months after the provisional application is filed b. There is at least 1 inventor in common to both the nonprovisional and provisional application c. Nonprovisional application contains or is amended to contain a specific reference to the provisional application d. Claimed subject matter in nonprovisional application is adequately supported by the disclosure in the provisional application AND e. The appropriate filing fee is paid vi. Legal attributes of a provisional application 1. Provisional applications are not examined for patentability and are abandoned 12 months after filing 2. Patent term is not reduced by the pendency time of the provisional application a. 1st filing date of nonprovisional application 3. provisional application is not entitled to claim priority from earlier foreign or domestic applications 4. eventual effectiveness of the provisional application will be analyzed on a claim by claim basis in a later filed nonprovisional application 5. a provisional application acts as a shield against prior art in the same manner as a nonprovisional application New matter: The law and regulations on new matter a. new matter and original applications i. Amendment of the disclosure 35 USC 132(a): No amendment shall introduce new matter into the disclosure of the invention, amendments that do not directly affect the disclosure of the invention may be permissible even though they result in the addition of material not found explicitly in the original application ii. Conformation of the disclosure: the application must conform with 35 USC 112 and 37 CFR 1.83

iii. Claims as disclosure: claims may constitute a part of the disclosure of the invention; IF SO 1. The claim language must be sufficiently specific to teach one of ordinary skill in the art the characteristics, attributes, and functions of the omitted aspect of the invention iv. Claims as written description: may constitute disclosure as well as written description of the invention v. Concurrent amendments: does the amendment add new material to disclosure? Must be part of the original disclosure/ application for it to count vi. Reintroduction of cancelled material MPEP 608.01(s): 1. (pertaining to original application) cancellation of disclosure material, without more, does not establish abandonment; and reintroduction of cancelled disclosure material does not result in the addition of new matter even when introduced into a continuing application vii. Incorporation by reference: this is allowable but depends on whether material is essential or nonessential 1. essential material is information necessary to describe the claimed invention a. Essential material can only be incorporated in an application which will issue as a US patent by reference to an issued US patent or a pending, commonly owned US application which itself doesnt incorporate essential material as a reference b. Nonessential subject matter may be incorporated into an application to be issued as a US patent, and essential material may be incorporated by reference in a benefit application by reference to any publication viii. Deposit of biological materials: if available to the public: 1. Applicant only has to identify the material and disclose its use 2. If not readily available to the public the applicant must file a sample with an accepted depository 3. Will not be considered new matter if specifically identified in the original patent application ix. new matter objections and rejections: the examiner may only object to matter added by an amendment to the specification or drawings as new matter IF the amendment provides essential support for amended claims rejection of those claims under 35 USC 1st will also be proper b. New Matter and subsequent applications

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i. Continuation in part applications: claims in continuation in part applications that require new matter added to the continuation in part application are only entitled to the later filing date ii. Continuation/ divisional applications: may not include subject matter that would be considered new matter if added to the original application by amendment iii. Reissue applications: [more strict] no new matter shall be introduced into an application for reissue. iv. Foreign national/ international applications: earlier filed foreign national or international applications may be relied upon for the benefits of the earlier filing date only to the extent that the prior application discloses the invention sought to be patented in the US v. Provisional applications: no amendments to provisional applications are allowed 1. New matter is allowed but no filing date advantages are given Nonprovisional patent application 35 USC 111(a) a. Disclosure i. Required components of an application 1. Specification in accordance with 35 USC 112 2. 1 or more claims 3. Drawings where required by 35 USC 113 4. Oath or declaration per 35 USC 115 5. Requisite filing fee ii. To get advantage of a filing date: 1. Specification 2. At least 1 claim 3. Drawing if deemed necessary iii. Arrangement of elements of the application 1. Utility application transmittal form 2. Fee transmittal form 3. Application data sheet 4. Specification and claims 5. Drawings 6. Executed oath/ declaration iv. Specification should be arranged as such: 1. Title of the invention: no longer than 500 characters a. Should be brief, technically accurate, and descriptive 2. Cross-references to related applications a. Unless included in the application data sheet

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b. If claiming a filing date from an earlier application, special references must be made to the application Statement regarding Fed. Sponsored research or development: application owner must insert a statement regarding the extent of government rights in the invention Reference to a sequence listing, table, or computer program: if the application has a digital sequence listing the applicant will include the references here Background of the invention: a. Field of the invention: what is it? b. Description of related art: What else is it like? Brief summary of the invention: BE CAREFUL HERE OR ELSE Brief description of the several views of the drawings: describes views of the drawings shown Detailed description of the invention: must satisfy 35 USC 112 a. Best mode: must show the best mode known at the time or else the related claims will be invalidated b. For chemical inventions: working example when possible i. Examples showing steps towards creation ii. Examples required depends upon the art involved c. Prophetic examples: detailed instructions that have not actually been made but could be made from the instructions i. Written in present tense ii. Must be workable can X be made to work with the given instructions? d. Pharmaceuticals: utility: contrast a situation where an applicant discloses a specific biological activity to a disease condition, i. Assertions falling within the latter category are sufficient to identify a specific utility for the compound e. Incorporation by reference: MPEP 608.01: application for a patent may only incorporate essential material by reference to either: i. A US patent OR ii. A pending, commonly owned US application f. Biotechnology applications:

i. Deposits of biological materials: if recreation of a sample is too difficult without experimentation the sample can be kept @ a reliable public depository ii. Sequences of nucleotides, amino acids: 1. Requirements are much stricter that 35 USC 112 2. Application that has an entire gene sequence has the upper hand on an application that specifies only a portion of the sequence g. New matter: applicant can only rely on the disclosure contained in that application as filed with the PTO to meet 35 USC 112 requirements h. Trademarks and names used in trade: i. Trademark = word, letter, symbol, or device adopted by 1 manufacturer or merchant and used to identify and distinguish his or her product from others 1. Dont identify the product by trademark, describe various properties and content of the material 9. A claim or claims: 35 USC 112/ 37 CFR 1.75 a. Form of claims: each claim must work grammatically as the object of a sentence starting with I claim b. Dependent claims: multiple dependent claim may refer to more than 1 claim in the alternative only i. i.e. [3,4, OR 5] NOT [3,4, and 5] ii. multiple dependent claims shall not serve as the basis for any other multiple dependent claims iii. multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered c. basis for claim terminology: special terms used must have an antecedent basis in the specification d. Numbering of claims: must remain consistent throughout prosecution 10. Abstract of the disclosure: submitted as a separate sheet following the claims and prior to the signature of the application 11. Drawings: 35 USC 113/ 37 CFR 1.84 a. Cases where drawings are required

i. Drawings are needed if they are referred to in the specification 1. OR ELSE the filing date will be lost b. Drawings not required i. If the application contains a method claim ii. For conventional items coated or impregnated with the invented material c. Photos as drawings: not considered proper drawings unless they fall into specific catagories d. Drawings must contain: i. Every feature of the invention specified in the claims ii. If invention is an improvement: 1. Must show the improved portion itself AND 2. A disconnected version of the improvement e. Correction/ amendment of drawings: submitted via a separate form i. If informal: may be used if appropriate, but the examiner will note that they must be fixed in the Office Action 12. Sequence listing (if not digital) 13. Computer program listings: if there are 300 lines of code or less, the code goes in the drawings or the specification a. IF more: then it goes on CD(s) 14. Models/ Exhibits/ Specimens: applicant may be required to furnish a model for some inventions as required (i.e. a perpetual motion machine) a. An exhibit will not be refused unless it is bulky or dangerous b. Oath or Declaration: applicant is required to make an oath that he is the original/ 1st member of the process, machine, manufacture, or composition of matter or improvement thereof i. Required elements: identifies each inventor by name, residence, and citizenship 1. Person making oath/ declaration has reviewed and understands the content of the specification 2. Person believes named inventor(s) to be original/ 1st to develop x invention 3. Acknowledges rule 1.56 duty to disclose

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4. IF CLAIMING FOREIGN PRIORITY: must identify the foreign application or inventors certificate plus each foreign application that was filed prior to the application upon which priority is claimed 5. If the application is a continuation-in-part that claims additional subject matter, the individual making the oath/ declaration must acknowledge a duty to disclose information material to patentability 6. Signature: oath/ declaration must be signed by the applicants 37 CFR 1.41 ii. Supplemental oaths/ declarations: invention changes during patent process governed by 37 CFR 1.67 iii. Correction of oath/ declaration: substance cant be messed with BUT minor issues can be corrected with a form as governed by MPEP 602.01 c. Filing and Persecution fees: 35 USC 41 and 37 CFR 1.16-1.21 i. Small entity status: designed so individual inventors or small businesses can file for patents without excessive payments = about 50% off of normal cost 1. 13 CFR 121.802, PTO rule 1.27(a) ii. On filing and amendment 1. Fees for new independent claims 2. Blanket fee for 20 claims 3. Details provided in 37 CFR 1.16(d) iii. Refunds: must be requested within 2 years of when fee was paid 1. Claims already paid for are canceled: there will be no refund d. Deferred Examination: 37 CFR 1.103 i. Application filed on or after November 29, 2000 will be published as a matter of course, unless it qualifies for non-publication OR The applicant requests non-publication AND 1. Applicant for an application filed before November 29, 2000 may voluntarily have the application published IF the application is scheduled for publication then the applicant may have examination deferred for up to 3 years from the earliest filing date claimed subject to the terms of 37 CFR 1.103 Publication of Patent Applications and Pre-issuance royalties a. PACR (now PAIR?) and EFS i. PACR/PAIR: displays published file wrappers for patents ii. EFS: allows applicants to file patents electronically b. Publication (37 CFR 1.217): NORMALLY applications are published and copies of their files can be obtained after 18 months

i. Contents of the patent application publication 1. Information in applicants executed oath/ declaration 2. Any application papers or drawings submitted in reply to a preexamination notice 3. If applicant wants patent application publication to include name/ address of assignee; separate paper must be submitted providing information indicating it has been provided for inclusion in the publication 4. Changes made by preliminary amendment are not incorporated 5. Applicant may have his application published with amendments to the specification, drawings, oath, or declaration made during examination if an electronic version of them is submitted in compliance with EFS requirements 6. Applicant may have US application redacted to conform to foreign applications by filing required submissions within 16 months of the earliest filing date: 37 CFR 1.217(a-c) ii. Exceptions to 18 month publication rule (35 USC 122(b)(2)): 1. Application wont be published if: a. It is no longer pending b. Subject to a secrecy order under 35 USC 181 c. Provisional application filed under 35 USC 111(b) OR d. Application for a design patent 2. Application wont be published if applicant makes request upon filing, certifying that the invention disclosed in the application will not need to be published within 18 months after filing [no foreign counterpart exists] iii. Voluntary publication, republication, or early publication: 1. Voluntary publication: is allowable as long as in compliance with EFS regulations 2. Republication of an application: to get royalties applicant may want to republish: must include copy of application in compliance with EFS regulations 3. Request for early publication: applicant submits request and office will handle as soon as possible: doesnt guarantee a certain date as there is a line iv. Protests/ oppositions are prohibited after publication: unless the applicant gives their express written consent v. Deferred examination is permitted only for published applications vi. Biological deposits arent publicly released upon publication of the application

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1. Not released until the patent has been granted c. Provisional rights/ Pre-issuance Royalties: i. National application: there are conditions/ limitations prerequisite to the collection of pre-issuance royalties 1. Unauthorized user must have had actual notice of published application or else no royalty recovery is allowed 2. Claims in published application must be substantially identical to the claims in the later-issued patent a. In order to get royalties b. Must be substantially identical: without substantial change 3. Action for pre-issuance royalties must be commenced within 6 years after the issue date 4. Application must have been published in English OR officially translated Examination of Nonprovisional Patent Applications a. Pre-examination by OIPE (office of initial patent examination): all applications will go here unless it is a request for continued persecution application i. OIPE will 1. Assign serial number to the application 2. Electronically scan application papers into an electronic database (PAIR) 3. Place papers in file wrapper (now done electronically via PAIR) 4. Reviews papers to determine if all the necessary parts of the application are present 5. Stamps postcard with date received/ tentative application number and mails postcard back to the applicant 6. If application papers include all of the required parts from 35 USC 111(a), then application goes to the appropriate tech. center IF NOT then OIPE sends notice to applicant and does 1 of the following: a. Retains the application for further action b. If application fails to provide filing fee or oath/ declaration then the applicant has 2 months to fix the issue (period can be extended) c. If 1 or more papers/ figures are missing OIPE will mail notice of omitted items to the applicant i. Applicant has NON-EXTENDABLE 2-month period to fix ii. Examination on the merits:

1. Examining corps: divided into technology groups based on specialization 2. Order of examining patent applications: a. Applications awaiting 1st action: oldest US filing date in queue gets priority b. Amended applications: sorted by effective US filing date c. Applications advanced for examination (special cases) will be advanced ahead of line IF: i. So ordered by the commissioner ii. Applications deemed of peculiar importance by some branch of the public service iii. Applications which are the subjects of successful petitions to make special (i.e. patent superhighway?) 3. Suspension of action (37 CFR 1.103): a. Suspension for good/ sufficient cause i. Office will suspend only its own actions (not applicants reply) 1. Max period of suspension is 6 months b. Limited suspension is available for continued applications and requests for continued examination c. Deferred examination: applicant may defer examination of application for up to 3 years from the earliest filing date but only if the application is one that is to be published d. Suspension for public safety/ defense; PTO will suspend if: i. Application is owned by US ii. Publication of invention may be detriment to public safety/ defense iii. The appropriate department or agency requests such a suspension e. Statutory invention registration: PTO will suspend application if office accepted request to publish Statutory invention registration in application; unless interference proceedings are taking place 4. Examination for informalities (37 CFR 1.104): a. 1st examiner looks at application with respect to its compliance with matters of form such as i. Technical subject matter for 1. Sufficiency of terminology OR 2. Sufficiency of the drawings

ii. Noting any informalities called to his attention by OIPE 1. IF obviously informal: examiner is supposed to point out the informalities; multiple informal claims should be treated as 1 5. Examiners search (MPEP 719.05/ 904): the examiner makes a complete listing of the field of search on the flap of the file wrapper which shows the applicant where the examiner searched 6. Examiners office action (35 USC 132): a. Office action not on merits: 1st office action may not consider patentability of the invention in 2 cases: i. Restriction/ Election: if more than 1 inventions are included in the patent, the examiner will require the applicant to elect claims for 1 invention ii. Multiplicity: examiner will specify number of claims considered permissible and require applicant to select a number of claims for examination that doesnt exceed the number specified by the examiner b. Initial office action on the merits i. Format: made of 3 documents: 1. Summary sheet 2. Explanation of grounds of rejection/ objection 3. Form notice of references cited ii. Contents of the office action 1. Completeness (37 CFR 1.104(b)): examiners action will be complete as to all matters, with some limitations a. Examiner is required to inform the applicant of the status of every claim in the application per MPEP 707.07(i) 2. Indication of allowable claims and reasons for allowance: examiner informs the applicant as to which claims are allowable a. Examiner is permitted BUT NOT REQUIRED to set forth reasons for allowance

3. Rejection of claims: grounds of rejection for every rejected claim are to be clearly set forth with statutory basis for rejection provided as well 4. Citation and copies of references: examiner provides a list of the most pertinent references in the office action a. If incorrect reference is provided, the period for response is restarted as of the mailing date of the letter 5. Protests and citation of references third parties (37 CFR 1.291): a. Publications relevant to the pending published application submitted before a notice of allowance and within 2 months of the date of publication will be entered into the file iii. Office actions responsive to applicants replies to previous actions: examiner reexamines the application after applicant responds to the office action in a timely manner iv. Final office actions 1. Basis: 2nd office action on the merits is normally a final office action a. Applicant must: i. Present allowable claims ii. Abandon the application OR iii. Appeal the rejection before the period to reply is over 2. When proper on 2nd action: a. Unless: i. Examiner brings forth new grounds for rejection ii. New cited art is used as a basis for rejection 3. Final action proper on 1st action (MPEP 706.07(b)) a. If the new application is a continuing application of an earlier application

AND all claims of the new application are drawn to the same invention claimed in the earlier application AND would have been properly finally rejected in the next office action if entered in the earlier application b. NOT proper to make final the 1st office action in a continuing/ substitute application where new matter is involved OR new issues are raised 4. Premature final action: applicant may file a request for reconsideration limited to the question of the finality of the action 5. Withdrawal of final rejection: final action that wasnt premature may be withdrawn if a. An amendment filed after the final rejection places the application in condition for allowance b. An amendment filed after the final rejection places the application in better form for appeal c. An amendment filed after the final rejection complies with the examiners objections or requirements as to form d. The examiner learns of a new prior art reference that trumps the claims made 6. Special types of office actions: a. 1st action allowance: 1st application is allowed b. Ex parte Quayle Action: application is allowable on substance, Quayle action is issued shortened statutory response period c. Advisory action re: amendment after final an advisory action is issued

by examiner in response to applicants reply to final office action d. Examiners amendments: examiner may make minor amendments to the claims after receiving the approval of the applicants representative e. Advisory action re: amendment after notice of allowance : after filing of amendment post notice of allowance PTO advises the applicant as to whether amendment has been entered f. Notification re: Non-responsive reply and request for extension of time: examiner informs applicant as to whether or not extension has been granted c. Rejection of claims: i. In general: 37 CFR 1.104 1. If invention is not considered patentable, OR patentable as claimed, the claims (or those considered unpatentable) will be rejected 2. In rejecting claims under 102 or 103 the examiner must cite the best references ii. Rejection for lack of novelty (102), loss of right or Obviousness (103) based upon prior art references 1. Format/ terminology a. Rejections based on 35 USC 102 i. Claimed invention must be completely described or illustrated by the reference ii. Cant be a combo of prior art references (thats 103) b. Rejections under 35 USC 103: i. Combination of prior art references render the claimed invention obvious to one skilled in the art

2. Rejections based on well-known prior art or facts within personal knowledge of the examiner a. 103 rejection may be made on the basis that an element is common knowledge in the art b. When the rejection is based on facts within the personal knowledge of the examiner, the data should be stated as specifically as possible c. Rejections based on admissions by applicant: 103 rejection may be based upon subject matter that the applicant has admitted to be prior art 3. Rejections not based on prior art: a. Typically pertain to: i. Non-statutory subject matter ii. Lack of utility iii. Failure to comply with 35 USC 112 b. Proper and improper rejections based on non-statutory subject matter i. Statutory basis: 35 USC 101 if the invention is not a process, machine, manufacture or composition of matter or an improvement thereof, it is unpatentable ii. Types of non-statutory subject-matter rejections: printed matter; naturally occurring article; methods of doing business; scientific principle used to produce new result; algorithms used to produce new result; aggregations all of these may be subject to rejection unless new/ useful result can be shown to occur

4. Lack of utility: 35 USC 101 a. Types of rejection i. Fraudulent utility: invention lacks utility if its sole purpose is to deceive the public ii. Against public policy: if for illegal or immoral purpose it lacks utility iii. Frivolous: must actually be practical (rejection on these grounds is very rare) iv. Inoperativeness: if the invention cant be used it will be rejected 5. Infrequent rejections based upon 35 USC 112: a. Double inclusion: claim that positively recites the same claim twice in an application b. Duplicate claims: any claim that is a duplicate of another claim in the application may be rejected by the PTO c. Undue multiplicity: too many claims, examiner will call applicant and tell them to get rid of some d. Prolix: claim will be rejected as prolix when it recites so much unnecessary verbiage or unimportant details as to render it indefinite e. Failure to claim subject matter which the applicant regards as his invention: invention is something different than what is described in the claims 6. Public use proceeding: special procedure provided for by the PTO rules of practice; permits anyone an opportunity to demonstrate that an invention being claimed

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in a pending US application has been in public use or on sale in the US for more than one year prior to the filing date of the application claiming the invention Overcoming rejections with affidavits: overcoming rejections in prosecution by filing a verified signed statement designed to refute the factual basis of the rejection a. Affidavits to remove a reference as prior art i. Rule 1.131 affidavits showing prior invention US patent system normally rewards 1st to invent (changes this year), the application does not have to reveal any information about the actual date of invention, initial date examiner uses is the effective filing date of the application 1. Character of the rule 1.131 affidavit evidence comparative burden of proof a. Applicant has to make a prima facie showing the invention was completed before the reference date. 2. Unremovable references: rule 1.131 affidavit is not effective in any of the following circumstances: a. 102(b) statutory bar b. 102(d) statutory bar c. Interference situation d. Double patenting situation e. Non prior art situation f. Abandonment/ dedication to the public situation g. Admitted prior art h. 102(f) prior art i. 102(g)(2) prior art j. Lost interference count 3. Contents of the affidavit complying with 37 CFR 1.131 3 ways to establish prior invention and thereby antedate a cited reference: a. Actual reduction to practice prior to reference date = make it work with somebody watching b. Conception of the invention prior to the effective date of the reference coupled with due diligence from prior to the references date to constructive reduction to practice = invention was birthed c. Conception of invention prior to the effective date of the reference coupled with due diligence from prior to the references date to constructive reduction to practice 4. Procedural Aspects:

a. Seasonable presentation: affidavit submitted before the final office action are timely and will be considered in all instances except one: i. Where the applicant petitions for accelerated examination based on submission of a search report and discussion of cited references, and the applicant indicates an intention to antedate one of the cited references, the affidavit must be submitted before the application is taken up for first action, BUT in no event later than 1 month after the petition for accelerated examination is filed b. Examination: prior art rejections should ordinarily use the best reference exclusively; BUT when the most pertinent reference seems likely to be antedated by an affidavit, the PTO approves backing up the rejection based on the potentially removable reference with a rejection based on the next best reference c. Review: decisions amounting to a refusal to consider an affidavit based solely on the formal sufficiency and propriety of affidavits are reviewed by petition to the commissioner 5. Completion of the invention: How much do you have to show? a. Perspective view: Affidavit will eliminate a reference if it shows applicants earlier possession of i. Whatever the reference shows OR ii. An obvious variant of what the reference shows 1. Affidavit may not rely on a foreign filing date to show a constructive reduction to practice b. Showing as much as the reference shows but less than the invention as claimed: i. 102 reference: valid only for what it discloses and if the applicant establishes priority with respect to that disclosure, and there is no statutory bar, it is of no effect at all ii. 103 reference: reference that must be overcome by affidavit can be overcome by antedating the pertinent disclosure of the reference, without regard to the invention as claimed

c. Showing less than the reference and less than the invention as claimed: i. Indirectly antedating the 102 reference against a chemical genus: (statute conflicts directly with case law on this subject) affidavit must show as much as the minimum disclosure required by 112 to support a generic claim affidavit must persuade one versed in the art that the applicant possessed so much of the invention as to encompass the reference disclosure, then that showing should be accepted as establishing prima facie a case of inventorship prior to the reference ii. In re Spiller: in this case an affidavit was specifically approved that was neither commensurate with the reference nor within the rejected claim d. Showing nonobvious utility: a rule 1.131 showing of all that the examiner relied on in the reference as the basis for rejecting the claim will eliminate the reference ii. Rule 1.130 Affidavits Removing a commonly owned US patent: permits an applicant to remove a reference, if the claims differ in any way by filing both: a. A terminal disclaimer in compliance with rule 1.321(c) AND b. An affidavit stating that: i. The application under rejection and the reference patent or published application are currently owned by the same party AND ii. The inventor named in the application under rejection is the prior inventor, under 35 USC 104s territorial limitations for establishing a date of invention 2. Rule 1.130(a) only allowed when: a. The inventions of the 102(e) reference and the rejected claim were not owned by the same party or subject to an obligation of assignment to the same party at the time the invention of the rejected claim was made b. The 102(e) reference and the pending application (or patent undergoing reexamination) are currently owned by the same party

c. The claim under rejection in the pending application or reexamination is different from a claim in the 102(e) reference d. The claim under rejection, while different, is not patentably distinct from the claim in the 102(e) reference (because a patentably distinct claim is not properly rejected) e. The 102(e) reference was issued less than a year before the effective filing date of the claim in the application f. The inventive entity of the rejected claim is different from the inventive entity named in the 102(e) reference g. The invention of the rejected claim was made prior to the invention claimed in the reference patent or published application, under the territorial limitations set forth in 35 USC 104 IF ANY OF THESE 7 CONDITIONS IS ABSENT RULE 1.130 IS OF NO AVAIL OR IS NOT NEEDED. SPECIFICALLY: i. If the inventions of the 102(e) reference and the rejected claim were owned by the same party or subject to an obligation of assignment to the same party at the time the invention of the rejected claim was made ii. If the 102(e) reference and the pending application (or patent undergoing reexamination) are not currently owned by the same party, the only resolution is interference iii. If the rejected claim is identical to a claim in the 102(e) reference there is statutory double patenting which a terminal disclaimer will not cure iv. If the claim under rejection is patentably distinct from the claim(s) in the 102(e) reference, there is no double patenting problem and no 103 obviousness problem v. If the 102(e) reference was issued more than a year before the effective filing date of the rejected claim, it is also a 102(b) statutory time bar and may be used to support a 103 rejection for want of unobviousness vi. If the inventive entity of the rejected claim is not different from the inventive entity named in the

reference, the reference is not by another and thus does not constitute 102(e) prior art vii. The invention of the rejected claim was made prior to the invention claimed in the reference patent or published application, appears to be irrelevant in view of the November 29, 1999 amendment to 35 USC 103(c) precluding use of a commonly-owned 102(e) reference to support an obviousness rejection iii. Rule 1.132 affidavits: used to remove a reference rule 1.132 permits the use of an affidavit to transverse any rejection of or objection to a claim on a basis not otherwise provided for. 1. Showing that the subject matter of the reference is attributable to the inventors a. Perspective view: ones own invention, whatever the form of disclosure to the public, may not be prior art against oneself, absent a statutory bar b. Inventor-authored publication: a rejection based on a publication may be overcome by a showing that it was published either by applicant himself or on his behalf. if the total identity between the author of a publication and the inventor or inventors, respectively, of the application is apparent from the application and the publication, the fact of authorship should not be disputed by the examiner and there should be no need to file any affidavit c. Inventor-coauthored publication: same as above for multiple inventors d. Patents having inventor in common with the application: joint application of A and B can be rejected over an earlier filed patent issued to B alone because B is another to A and B under 102(e) e. Derivation: accepted way of overcoming a patent reference that shows an applicants own invention is to submit the affidavit of the person responsible for the reference to show that the information disclosed therein was obtained from the applicant 2. Showing common ownership by a rule 1.132 affidavit: if common ownership of the claimed invention and the subject matter of a 102(e),(f), or (g) event is established, the latter will disqualified as prior art in a 103 rejection

iv. Checklist for rejection over a removable reference: when prior art rejection is supported by any reference that is not a 35 USC 102(b) bar the following points should always be checked 1. Double check the effective date of the reference 2. Make sure the reference does not claim substantially the same invention if it is a US patent 3. Check to make sure the subject application is not entitled to the filing date of a US Parent or provisional application or to foreign priority by virtue of either a foreign national application under 35 USC 119(a) or an international application designating at least one country besides the US under 365 4. Determine the inventor(s) of the rejected claim. See if the inventor was a coauthor or coinventor of the reference. Make sure that the coauthor or coinventors name should not be added to the application as coinventor 5. Check with the inventor for his earliest provable conception date and actual reduction to practice and determine what supporting documentation is available 6. Make sure the facts surrounding the evidence to be offered on reduction to practice do not in fact establish a statutory bar 7. Find out if there is a known relationship between the work of the inventor and that of the author or patentee of the reference 8. If the reference is a US patent or published application issued or published after completion of the invention by the inventor of the subject application, order a file wrapper of the patent or published application to find out whether any part of the relevant disclosure was added by amendment so that you will know what date to swear behind 9. If a decision has been made to file a 1.131 affidavit and if a personal meeting with the affiant isnt possible, read a draft of the affidavit over the telephone to get the afiants reaction to the wording of the affidavit before sending it for execution 10. Send the approved affidavit to the inventor or other assignee with the exhibits attached for execution 11. Prepare a response to the office action and refer to the attached 1.131 affidavit as being submitted in support of those claims that the applicant is not going to patentably distinguish over the reference 12. When the executed affidavit is returned, file a reply with the affidavit and exhibits attached

b. Otherwise showing entitlement to a patent affidavit advocacy under 37 CFR 1.132 i. An overview: if applicants case turns on a fact, inference, or proposition, relevant evidence must be presented ii. Specific occasions for 1.132 affidavits or declarations: 1.132 is the mechanism for submitting evidence to traverse a rejection or objection on any basis not otherwise provided for by the rules, more common types of showings made in 1.132 include: 1. Comparative test results illustrating unexpected properties, or unexpectedly superior results, in relation to close prior art 2. Operability and sufficiency of disclosure in the application 3. Absence of enabling disclosure or inoperability of a reference 4. Obviousness of undisclosed utility of a chemical invention 5. How others felt about the problem and reacted to solution; longfelt need followed by quick acceptance in the trade evidenced 6. Failures of others searching with motivation for the solution that applicant found 7. Incredulity of the trade when informed of applicants solution 8. Long-accepted factors discouraging the type of investigation that the examiner contends would have led to the invention 9. Revelation of facts regarding a possible statutory bar by use or sale, already resolved by the applicant in his favor 10. Level of skill in the art, in general 11. Interpretation of the meaning of a reference by the professional 12. Explanation of why a person skilled in one field would not look to another field to solve a particular problem iii. Examination of 37 CFR 1.132 affidavits: as a general rule, PTO does not pass on the credibility of the affiant, apart from the contents of the affidavit. An affidavit of an applicant as to the advantages of the claimed invention, while less persuasive than that of a disinterest person, cannot be disregarded for this reason alone iv. Illustrative problems with specific types of affidavits 1. Affidavits to overcome obviousness rejections a. Attacking the reference: affidavit can be presented and used to advantage to support a particular interpretation of a reference that the applicant is trying to promote b. Comparative test results: (need arises in connection with a prima facie obviousness rejection in chemical cases) rejection that is usually grounded in the structural similarity

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between the claimed compound and a compound disclosed in a 103 reference c. How others felt about the problem and reacted to the solution i. Commercial success and long-felt need: in order to have any effect on the question of nonobviousness 1. The setting in which commercial success is probative is that in which it is coupled with a showing of long-felt need a. ALSO the failures of others who searched with motivation to find the solution that the inventor found are highly probative ii. Incredulity of the trade: lack of instant commercial success can be convincing evidence of nonobviousness iii. Factors leading away from the invention: presumed obstacles to practicality, may be used to negate a case of prima facie obviousness 2. Affidavits on grounds of rejection other than obviousness a. Lack of utility: chemical cases (in mechanical and electrical utility is presumed) utility must be apparent on its face; otherwise it must be explained in the application as required by 112 b. Insufficient disclosure: the application need not disclose that which is old or obvious in the art. If the affiant is the inventor, his affidavit should omit any comment on the application disclosure and restrict itself solely to the level of skill in the pertinent art c. Inoperability of the invention: examiner may justifiably doubt that an invention will work c. Inequitable conduct relative to affidavits: in ex parte prosecution, the patent examiner, with limited investigative power is an easy mark for a devious applicant so laws regarding inequitable conduct by applicants is unforgiving Double patenting a. Defined: inventor files more than one application claiming the same invention. b. Same-invention and obviousness-type double patenting distinguished: i. Statute versus case law: no statutory provision on double patenting; THERE IS a judicially established standard that precludes issuance of a patent containing claims that define an invention which would have been

obvious to a person of ordinary skill in the art in view of the invention claimed in the previous patent ii. One-way vs. two-way obviousness: 1. One-way: test is whether the design and the utility patent claim the same subject matter 2. Two-way: test is whether the subject matter of the claims of the patent sought to be invalidated would have been obvious from the subject matter of the claims of the other patent, and vice versa a. For two-way only when the narrower claim is obvious is there double patenting c. Avoidance of obviousness type double patenting i. Attack the obviousness rejection: establish that, in fact and in law, no such rejection is appropriate 1. Very important to avoid double patenting rejections without filing terminal disclaimers ii. Terminal disclaimers: specifies that a patent granted on X application shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the rejection iii. Terminal disclaimers in CPA practice: the terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application iv. Combining applications: a single application that results in a single patent avoids all double patenting bases for rejections v. Simultaneous issuance: when two patents expire simultaneously, there is no extension of monopoly and thus neither application is invalid for obviousness type double patenting d. Nonobviousness type double patenting: when two claims are patentably distinct ie one is unobvious over the other, there are then two legally cognizable inventions, each of which is separately and properly patentable e. Avoidance of nonobviousness type double patenting i. Attack the rejection: if the later filed application is a CIP or differs in its disclosure from the patent, and the claim at issue covers subject matter not fully disclosed in the patent, no such rejection can properly be made; if there is some reason why the applicant was restrained from adding the later asserted claims in the earlier case, the rejection is also inappropriate ii. Terminal disclaimers: rejection can be avoided by filing a terminal disclaimer iii. Combining applications: if examiner enters a provisional nonobviousness type double patenting rejection over another pending application,

combining applications would be effective to overcome the rejection, as in the case of overcoming an obviousness type double patenting rejection iv. Appeal: en banc review should be sought so that if the appellants position prevails, the PTO will recognize the holding of the Fed Circuit and will eradicate the nonobviousness type double patenting rejection that would otherwise be asserted in the future against the winning partys later comparable pairs of nonobvious applications f. Double patenting between utility patents and design patents: when new article has an innovation that is both design/ utility law of double patenting still applies (but only exists in judicial form, no specific statute) g. Double patenting and divisional applications [35 USC 121] i. Restriction requirement precludes a double patenting rejection: PTO can require an application that claims 2 or more independent and distinct inventions to be restricted to one of those inventions ii. Only the non-elected claims can benefit from 35 USC 121: if a divisional application contains claims directed to any invention other than those that were non-elected in response to the original restriction requirement in the parent application, the protection of 121 is lost as to those claims iii. For 35 USC 121 to apply the PTO restriction requirement must remain in effect: 121 prohibition against double patenting rejections also does not apply where the original restriction requirement was withdrawn by the PTO in the parent application after the filing of a divisional application or where it was conditionally made h. Duplicate claims in the same application: when there is only one application, but that application contains claims that either do not differ at all from each other, or differ only slightly from each other NOT DOUBLE PATENTING (only one application) i. Conflicting claims of different inventive entities with a common assignee: where applications with conflicting claims are owned by the same entity, the PTO will not set up an interference except under very unusual circumstances. The normal practice is to request the common owner to designate which inventive entity was first. j. Double patenting vs. Non-patenting: statutory invention registrations (SIR) i. The relationship: an inventor may obtain protection that is defensive in nature by filing an SIR, this means that: 1. An SIR constitutes prior art as of its filing date and becomes known to the world when it is published 2. It cannot issue as a patent, although it may be prosecuted as one until converted to a SIR, thereby never creating any exclusionary rights

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ii. In order to convert a patent application to a SIR, the applicant must submit a request including: 1. A waiver of the applicants right to obtain a patent on the subject matter of the claims of the application that is subject to the request 2. Payment of a fee for requesting publication of the SIR 3. A statement that the application meets the disclosure requirements of 35 USC 112 4. A statement that the application complies with the formal requirements of the rules of practice related to printing 5. SIR publication benefit contrasted to AIPA publication benefit: AIPA can provide defensive protection through any application filed on or after November 29, 2000 a. Unlike an SIR doesnt require waiver of any patent rights b. Like a SIR the publication constitutes prior art as of the application filing date Restriction Requirement and Election of Species a. Restriction practice overview i. Rationale for restriction 1. Perspective: How many patents can claim the same invention? Only one; How many inventions can be claimed in one patent? One or more, depending upon the nature of the inventions 2. Who needs restriction practice? Not against the law to join two separate inventions in one patent a. PTO has the authority to use its discretion to limit the claims of one application to a given subject where the claimed inventions are too distinct to justify practical coexamination. Which: i. Facilitates administration in the PTO ii. Gives more money to the PTO in the form of fees 3. What makes restriction practice so important? Because it is used all the time ii. Procedure in a nutshell: restriction requirement is proper under the PTOs rules if either: 1. The claimed inventions are independent OR 2. The claims are patentably distinct relative to each other iii. Authorities 1. Survey: governed by statutes a. 35 USC 121 b. 35 USC 372 c. 37 CFR 1.129 (B-C)

d. 37 CFR 1.141-1.146 e. 37 CFR 1.475-1.477 f. 37 CFR 1.488-1.489 g. 37 CFR 1.499 h. MPEP CH 800 i. PCT ART. 17 j. PCT RULES 13/40 2. 35 USC 121 explained: if 2 or more independent inventions are claimed in one application the director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the reqs. of 120 it shall be entitled to the benefit of the filing date of the original application. iv. Overview of restriction practice 1. Contents and timing of the examiners requirement: before examiner searches prior art, must determine whether the patent application claims distinct inventions that are properly subject to restriction a. If not: examiner will proceed to examine all of the claims on the merits and render an action on all of the claims b. If so: examiner makes a restriction requirement in accordance with 37 CFR 1.142 2. Telephone practice: before searching prior art, primary examiner is permitted to telephone the practitioner of record and ask if he will make an oral election, with or without traverse 3. Applicants reply a. Time for reply: when no election by telephone is made, a written requirement for restriction in a national application is mailed without an action on the merits and the applicant has one month to reply (extendable) b. Traversing the requirement: a petition for review of the restriction requirement will not be considered if reconsideration of the requirement was not requested. The applicant who responds to a restriction requirement without traverse loses the right to petition for review of the propriety of the requirement c. Provisional election: provisional election must be made in the applicants response to an election or restriction requirement even though it is traversed; the applicant may not shift as a matter of right to claiming another invention

after an action has been given on the elected claims, however the PTO might permit a shift that results in no additional examining effort v. Restriction procedure: 1. The restriction requirement: if there had been a provisional election by telephone, that would be noted along with the restriction requirement in the first action on the merits of the elected claims 2. Reply to the restriction requirement: need contain no more than an election selecting X group if applicant disagrees with the grounds for the restriction requirement or the grouping of claims and desires to preserve the right to challenge the requirement, an election should be made with traverse 3. Action following election of invention: if the election was made without traverse, the examiner proceeds to examine only the elected claims and holds the nonelected claims to be withdrawn from prosecution b. Restriction practice in applications with independent species claims i. Overview: common restriction scenario occurs when an application contains claims to two or more independent species that are patentably distinct from one another 1. Species are independent if they are not disclosed as being used together not connected in design operation or effect. 2. Species are patentably distinct when they are patentable over one another ii. The restriction requirement: 1. Examiners written action requiring election of species follows this format: a. Identification of each generic claim by number b. Identification of each of the disclosed species to which claims are drawn c. Requirement for provisional election of a single disclosed species to which claims are drawn d. Requirement for the applicant to list all claims readable on the provisionally elected single species e. A warning as to the requisites of a complete response (election) and notification of the applicants right to claim additional species in the event that a generic claim thereto is found to be allowable in accordance with 37 CFR 1.141(a)

2. Linking claims: a claim that is inseperable from and thus links together two or more otherwise properly divisible inventions. Examples: a. A true genus claim linking species claims b. A claim to the necessary process of making a product linking proper process and product claims c. A claim to a means for practicing a process linking proper apparatus and process claims; and d. A claim to a product linking a process of making and a use (process of using) iii. Reply to requirement for election: applicants reply to a requirement for an election of species should contain: 1. Provisional election of a single species identified by the examiner by stating, for example, the applicant provisionally elects the species of fig. 1 2. A listing of all claims readable on the elected species (including any claims added with the response), such as by stating, claims 1 and 3 read on the elected species; and 3. If the applicant contends that the species are not distinct, a traversal of the requirement for election iv. Action following election of species: where there has been an election of species with traverse prior to a search of the prior art, the examiner must reconsider the grounds for requiring election in advance of examination of the claims 1. Generic claim allowable: if the results of the search lead the examiner to conclude that the generic claim is allowable, the examiner will allow the generic claim, withdraw the restriction requirement as to all species claims, and allow the embraced species claims 2. Generic claim not allowable: if the examiner concludes from the search results that the generic claim is not allowable over the prior art, it will be rejected, and only the species claims to the elected species will be examined on their merits 3. Subsequent presentation of new claims subject to restriction: when claims are added by amendment to an application after an election, the examiner must determine whether the claims are drawn to the elected or nonelected species 4. Treatment of nonelected claims a. After election with traverse: where at traversed restriction requirement is adhered to by the examiner, it is repeated

and made final in the next office action with a reply to the argument advanced in the applicants traverse. When the case is otherwise ready for issue but has not received a final action the examiner should notify the applicant. b. After election without traverse: in the absence of a traverse, when the elected claims are found to be allowable and the case is otherwise ready for issue, the withdrawn claims directed to the nonelected invention are cancelled by examiners amendment without any advance notice c. Restriction practice in applications without independent species claims: i. The meaning of independent and distinct in 35 USC 121: while 35 USC 121 authorizes restriction only when 2 or more inventions claimed in an application are both independent and distinct, the Patent office interprets the statute as authorizing restrictions when the inventions are either independent or distinct ii. Reasons for insisting on restriction are required to support restriction: in order to support a restriction requirement, the PTO rules require not only a determination and explanation of why two or more claimed inventions are independent or distinct, but also that there be good reasons for insisting on restriction iii. Improper bases for restriction: 1. Scope of claims: restriction among claims solely because of their different scope is always improper, because there is only one inventive embodiment despite patentability of a dependent claim over a parent claim 2. Different claim formats: a restriction requirement between types of claims (Jepson, Markush, etc) must be based on the independence or distinctness of their subject matter, not their form 3. Single markush claim: a restriction requirement imposed on a single Markush claim is not proper iv. Distinct inventions subject to restriction common scenarios 1. Combination and subcombination claims: a combination is an organization of which a subcombination or element is a part (relationship applies to process claims as well as apparatus and product claims) a. Must be two way directness test before restriction can be required: i. The combination as claimed, does not require the particulars of the subcombination as claimed for patentability AND

ii. The subcombination can be shown to have utility either by itself or in other and different relations b. Claims to different statutory classes of inventions: claims in an application may recite inventions that fall into separate categories under 35 USC 101, but are nevertheless related, and therefore not independent i. Claims to apparatus and process performed thereby: distinct if either: 1. The process as claimed can be performed by hand or a materially different apparatus OR 2. The apparatus as claimed can be used to practice a materially different process ii. Claims to apparatus or its process and claims to product produced thereby: restriction supportable if: 1. The process as claimed is not an obvious process of making the product and 2. The process as claimed can be used to make other and different products OR 3. The product as claimed can be made by a materially different process iii. Claims to a product and a method of using the product: distinct when the method or use can be practiced with a materially different product OR the product can be used in a materially different process or method iv. Claims to a product, a method of using the product, and a method of making the product: v. Summary of typically improper cases for restriction 1. Claims that are clearly unpatentable over each other 2. Claims that differ only in scope 3. Claims that differ only in form 4. Claims that differ only be reciting matters of degree or equivalent elements whose interchangeability is self-evident 5. Subcombination claim and combination claim whose patentability clearly rests on the presence of the incorporated subcombination

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6. Process claim and claim to process defined only in terms of the characteristics of the product made 7. Product claim and claim to process defined only in terms of the characteristics of the product made 8. Process and apparatus claims involving exactly the same inventive concept and evidencing complete unity of invention 9. A single claim, such as a markush claim vi. Summary of typically proper cases for restriction 1. Unrelated inventions 2. Subcombination claim and combination claim that does not rely solely on the presence of the incorporated subcombination for patentability and subcombination has separate utility 3. Apparatus/process claims where the claimed process is practiceable by other apparatus or by hand or the claimed apparatus can be used to practice a different process, especially where different fields of search are indicated 4. Apparatus or process claim and product claim where the claimed process may be an unobvious way of making the product and the claimed process is useful for making other products, or the claimed product can be made by a different process Applicants reply to patent office action a. Amendments and replies to office actions: covered by 35 USC 132 b. Formal requirements for reply i. Signature: reply must be in writing, and it must be signed by a person having authority to prosecute the application; such a person may be any of the following: 1. A registered attorney or patent agent 2. A registered attorney not of record who acts in a representative capacity under the provisions of 37 CFR 1.34(a) 3. An assignee as provided for under 37 CFR 3.71(b) 4. All of the applicants for pat