This document is the outline I generated from the online tests available from the USPTO Patent Bar. I didn't pay for an expensive test prep to study for the patent bar. Instead, I went through the freely available test questions from 2002 and 2003, found all of the answers in the MPEP, and put the Q&As into manageable slides. Thus, the day before the exam, I was able to easily go through 200+ questions in only a few hours and go through this entire Outline in about an hour. Then, the day of the exam, I went through this outline in the morning. I took and "preliminarily" passed the patent bar on August 11, 2016. Hopefully this content will help you study for and confidently take the patent bar.
Patent bar practice questions april 2003Bradley Sands
The document contains a 15 question multiple choice exam from the USPTO regarding patent law procedures and rules. The questions cover topics such as proper Markush groups, responses to office actions, fees and deadlines, common ownership under 103, and when a final rejection is proper. The exam tests knowledge of the Manual of Patent Examining Procedure (MPEP).
In my experience a large majority of restriction requirements and election requirements (from the USPTO) do not comply with the law. This slideshow presents ideas for resisting them cost-effectively, usually without the necessity of filing a petition.
Sample California meet and confer letter LegalDocsPro
This sample meet and confer letter for California is used when a party has not received any responses to their discovery requests and wants to meet and confer with the other party before filing any motion to compel. The sample can be modified for use in many situations.
Defendants’ reply brief in response to plaintiff’s response brief and in supp...Cocoselul Inaripat
This document is a reply brief filed by the defendants in response to the plaintiff's response brief and in support of the defendants' motion for summary judgment. It summarizes that the plaintiff was transferred to a community corrections facility operated by Dismas Charities as part of his transition from federal prison back into the community. It alleges that the plaintiff violated rules of his placement by driving without permission and possessing a cell phone. As a result, Dismas reported the violations to the Bureau of Prisons, which returned the plaintiff to prison to serve the remaining 68 days of his sentence. The defendants argue they are entitled to summary judgment on the plaintiff's tort claims of false arrest, assault, battery, and malicious prosecution.
This document provides interpretations for ASME B31.3 regarding welding procedures, heat treatment requirements, testing pressures, and examination criteria. It contains 18 interpretations issued between December 1999 and March 2001 addressing topics such as governing weld thickness, repair weld examination, alternative heat treatment methods, bonding qualification requirements, and impact testing requirements for stainless steel. The interpretations are assigned numbers and refer to specific sections of ASME B31.3.
This document provides mandatory documentation requirements for expediting marine claims at TMLDC Ltd in Mumbai. It lists 12 key documents needed for claims processing, including the check sheet/forwarding letter, copies of excise documents and transport documents, damage estimates, photographs, signed forms and more. Proper documentation is needed to process claims quickly through the New India Assurance Company.
Sample collection of meet and confer letters for discovery in californiaLegalDocsPro
This letter identifies deficiencies in a party's responses to discovery requests and meets and confers regarding a motion to compel further responses and testimony at a deposition. Specifically, it notes boilerplate objections that do not comply with the code, objections to interrogatories that involve a single subject, and a party's blanket refusal to answer deposition questions or provide documents using a privilege claim. The letter provides citations and encourages resolving the issues without judicial intervention.
Mock answer and counterclaim of Ms. Geiger who allegedly rear-ended the plaintiff on I-540 by following too closely but alleges that the collision was the result of the plaintiff's proximate negligence.
Patent bar practice questions april 2003Bradley Sands
The document contains a 15 question multiple choice exam from the USPTO regarding patent law procedures and rules. The questions cover topics such as proper Markush groups, responses to office actions, fees and deadlines, common ownership under 103, and when a final rejection is proper. The exam tests knowledge of the Manual of Patent Examining Procedure (MPEP).
In my experience a large majority of restriction requirements and election requirements (from the USPTO) do not comply with the law. This slideshow presents ideas for resisting them cost-effectively, usually without the necessity of filing a petition.
Sample California meet and confer letter LegalDocsPro
This sample meet and confer letter for California is used when a party has not received any responses to their discovery requests and wants to meet and confer with the other party before filing any motion to compel. The sample can be modified for use in many situations.
Defendants’ reply brief in response to plaintiff’s response brief and in supp...Cocoselul Inaripat
This document is a reply brief filed by the defendants in response to the plaintiff's response brief and in support of the defendants' motion for summary judgment. It summarizes that the plaintiff was transferred to a community corrections facility operated by Dismas Charities as part of his transition from federal prison back into the community. It alleges that the plaintiff violated rules of his placement by driving without permission and possessing a cell phone. As a result, Dismas reported the violations to the Bureau of Prisons, which returned the plaintiff to prison to serve the remaining 68 days of his sentence. The defendants argue they are entitled to summary judgment on the plaintiff's tort claims of false arrest, assault, battery, and malicious prosecution.
This document provides interpretations for ASME B31.3 regarding welding procedures, heat treatment requirements, testing pressures, and examination criteria. It contains 18 interpretations issued between December 1999 and March 2001 addressing topics such as governing weld thickness, repair weld examination, alternative heat treatment methods, bonding qualification requirements, and impact testing requirements for stainless steel. The interpretations are assigned numbers and refer to specific sections of ASME B31.3.
This document provides mandatory documentation requirements for expediting marine claims at TMLDC Ltd in Mumbai. It lists 12 key documents needed for claims processing, including the check sheet/forwarding letter, copies of excise documents and transport documents, damage estimates, photographs, signed forms and more. Proper documentation is needed to process claims quickly through the New India Assurance Company.
Sample collection of meet and confer letters for discovery in californiaLegalDocsPro
This letter identifies deficiencies in a party's responses to discovery requests and meets and confers regarding a motion to compel further responses and testimony at a deposition. Specifically, it notes boilerplate objections that do not comply with the code, objections to interrogatories that involve a single subject, and a party's blanket refusal to answer deposition questions or provide documents using a privilege claim. The letter provides citations and encourages resolving the issues without judicial intervention.
Mock answer and counterclaim of Ms. Geiger who allegedly rear-ended the plaintiff on I-540 by following too closely but alleges that the collision was the result of the plaintiff's proximate negligence.
Sample motion to dismiss adversary complaint under rule12(b)(6)LegalDocsPro
This sample motion to dismiss an adversary complaint for fraud is made under Rule 12(b)(6) on the grounds that the complaint does not state a claim for relief, in the alternative the motion also requests a more definite statement. The sample contains a memorandum of points and authorities with citations to case law and statutory authority. This is a preview of the sample motion sold by LegalDocsPro.
Inspection & Test Plan - Electrical Power Distribution System - Q1447-CS-PCP-...Gary Hayes
This document is an inspection and test plan (ITP) for electrical power distribution systems for an EPC building works project. It outlines the quality verification activities, responsibilities, frequencies, acceptance criteria, and required verifying documents for items like material receiving, equipment installation, cable installation, and earthing systems. The ITP must be accepted by the lower tier subcontractor, contractor, and independent verification body. Inspections include checking that equipment is installed according to drawings, earthing components meet specifications, cable installation meets standards, and cable pulling does not damage cables. Records like inspection test reports must be completed and signed off.
The Philippine System of Medical Examinations for Seafarers has the following key points:
1) The Department of Health regulates medical clinics performing examinations on migrant workers and seafarers to ensure standards and reasonable fees.
2) Administrative Order No. 2013-0006 updated guidelines to strengthen clinic regulations and medical examinations in line with new laws.
3) Monitoring finds some clinics need improvements to fully comply with personnel, facility and equipment requirements.
Sample opposition to California motion for leave to amendLegalDocsPro
This sample opposition to California motion for leave to amend is used when a party wishes to oppose the request of another party for leave to amend their pleading such as an answer or complaint on the grounds of lack of diligence, long unexplained delay and prejudice. The sample on which this preview is based is 9 pages long and includes brief instructions, a memorandum of points and authorities with citations to case law supporting the opposition, sample declaration and proof of service by mail. The author is an entrepreneur and freelance paralegal who has worked in California and Federal litigation since 1995.
This document discusses guidelines related to tender processing and CVC guidelines. It provides details on different types of tenders, methods of obtaining bids, standard bid documents, earnest money deposits, performance securities, and the tender evaluation process. It emphasizes principles of public procurement like efficiency, economy, transparency, and fair treatment of suppliers. It also summarizes some key CVC guidelines related to pre-award stages, negotiations, and guidelines on tenders and using websites for procurement.
The document discusses analyzing stress in a buried branch connection using pipe stress analysis software Caesar II. The initial results using the basic soil model showed unrealistic high stresses at a tee. Further review found the basic soil model had much weaker axial than lateral soil springs. Switching to the more realistic American Lifelines Alliance soil model resulted in stress levels within acceptable limits by providing more balanced soil resistance. The lessons learned were to not rely solely on software and have a deep understanding of its limitations and assumptions.
Sample California complaint for assault and batteryLegalDocsPro
This sample California complaint for assault and battery also includes a cause of action for intentional infliction of emotional distress. The sample could be modified to add other causes of action as well. This is a preview of the sample complaint sold by LegalDocsPro.
Introduction to Offer: Advertisement, Auction and TenderPreeti Sikder
Learning Outcome: After completion of this lesson students will -
a) learn about the general principle relating to offer in case of advertisements of products and auctions placed in newspapers
b) learn about exceptions to the prima facie rules of offer.
This presentation covered key considerations for steel pipe design including history, hydraulics, pipe/trench design, joints, fittings, coatings, linings, and sustainability. For pipe/trench design, the presentation discussed calculating wall thickness based on internal pressure and external loading/deflection, and using granular bedding, flowable fill, or on-site soils for embedment. Rubber gasket joints are recommended for smaller diameters while welded joints are preferred for larger diameters. Fittings require reinforcement if above certain pressure thresholds. Coatings should be polyurethane or mortar for smaller diameters and polyurethane for larger diameters, with mortar lining typically used. The presentation emphasized designing for minimum
Variation: it’s Regulation & Management under the MDB-FIDIC (2006) & the PPA ...MMS presentation firm
Variation: it’s Regulation & Management under the MDB-FIDIC (2006) & the PPA (2011) Conditions of Construction Contracts & the Applicable Laws will help you to understand more about variation in terms international contracts and domestic contract(Ethiopian context)
The medical billing process involves several key steps:
1) Patients make appointments and provide their information;
2) Doctors examine patients, document medical records, and provide medical coding;
3) Coders assign codes to medical records which are then sent to billing;
4) Billers enter patient and visit details, submit claims to insurance, and handle payments and denials.
This document is a motion filed by the defense attorney Ruth C. Rose seeking pre-trial discovery from the prosecution related to two police officers - Deputy Clotworthy and Sergeant Smith - who were involved in the arrest of the defendant Belvin Pugh. The motion requests access to complaints against the officers, any discipline imposed as a result of investigations into complaints, and any other exculpatory or impeaching evidence within the meaning of Brady v. Maryland. It also seeks information from any civil service commission hearings involving the officers related to the alleged misconduct. The motion is made on the grounds that the defendant denies the version of events described in the police report and contends the officers falsified probable cause, and this discovery could provide impeach
Sample meet and confer declaration for motion to strike in California LegalDocsPro
This sample meet and confer declaration for a motion to strike in California is filed under Code of Civil Procedure § 435.5(a) to demonstrate compliance with the new meet and confer requirements before a motion to strike can be filed that became effective on January 1, 2018. The sample is 5 pages and includes brief instructions, sample wording and a proof of service by mail. The author is an entrepreneur and retired litigation paralegal that worked in California and Federal litigation from January 1995 through September 2017 and has created over 300 sample legal documents for sale. Note that the author is NOT an attorney and no guarantee or warranty is provided.
The Metropolitan Water Board sought to develop water from Lake Ontario as a supplementary source of water supply. Due to years of use, water treatment pump repair was needed to maintain supply.
The document discusses various aspects of contract and tender management including:
1) Different types of contracts like firm-fixed-price, cost-plus-fixed-fee, and incentive contracts that allocate risk differently between contractors and customers.
2) Key elements of the contract administration cycle including change management, quality control, and dispute resolution.
3) Reasons for contract termination like technological changes or contractor default.
4) Best practices for negotiations including defining objectives, evaluating opponents, and establishing strategies.
5) Components of a tender dossier such as technical specifications, eligibility criteria, and evaluation methods.
Acceptance in Contract and its CommunicationPreeti Sikder
Learning Objectives:
Students will :
a) learn the legal definition of acceptance and general rule of communication.
b) be able to distinguish between Bangladeshi and English law relating to acceptance
This document discusses various methods for applying foam to storage tanks for fire protection, including fixed surface systems, seal area protection, and subsurface foam injection. It provides design guidelines for each method, such as minimum application rates and durations. It also describes Williams' foam chambers and foam makers that can be used for fixed surface application through discharge outlets. The foam chambers are available in custom sizes and flows, and can accommodate dual agents. Supplementary application in diked areas is also addressed.
This document outlines rules for filing and serving lien claims with the Workers' Compensation Appeals Board in California. Key points:
- Lien claims must be allowable under Labor Code and not filed prematurely. Medical-legal costs cannot be included as liens.
- Lien claims must be filed electronically in an approved format, include required documents like proof of service and verification, and list the correct case number.
- Supporting documentation cannot be filed with lien claims except as ordered by the Appeals Board.
- Lien claims and supporting documents must be served on injured workers, employers/carriers, and their representatives when applicable.
- Amended lien claims must be clearly marked as such and also
The document describes a patent application that was filed on May 1, 2001 naming inventor H as the sole inventor. A primary examiner rejected all the claims under 35 USC 102(e) as being anticipated by a patent granted to inventors H and S that was filed on December 7, 2000. The patent application and patent define the same patentable invention. Filing a terminal disclaimer in accordance with 37 CFR 1.321(c) or filing a declaration stating the application and patent are commonly owned and the named inventor is the prior inventor under 35 USC 104 would overcome the rejection according to the patent laws and procedures in the MPEP.
Sample motion to dismiss adversary complaint under rule12(b)(6)LegalDocsPro
This sample motion to dismiss an adversary complaint for fraud is made under Rule 12(b)(6) on the grounds that the complaint does not state a claim for relief, in the alternative the motion also requests a more definite statement. The sample contains a memorandum of points and authorities with citations to case law and statutory authority. This is a preview of the sample motion sold by LegalDocsPro.
Inspection & Test Plan - Electrical Power Distribution System - Q1447-CS-PCP-...Gary Hayes
This document is an inspection and test plan (ITP) for electrical power distribution systems for an EPC building works project. It outlines the quality verification activities, responsibilities, frequencies, acceptance criteria, and required verifying documents for items like material receiving, equipment installation, cable installation, and earthing systems. The ITP must be accepted by the lower tier subcontractor, contractor, and independent verification body. Inspections include checking that equipment is installed according to drawings, earthing components meet specifications, cable installation meets standards, and cable pulling does not damage cables. Records like inspection test reports must be completed and signed off.
The Philippine System of Medical Examinations for Seafarers has the following key points:
1) The Department of Health regulates medical clinics performing examinations on migrant workers and seafarers to ensure standards and reasonable fees.
2) Administrative Order No. 2013-0006 updated guidelines to strengthen clinic regulations and medical examinations in line with new laws.
3) Monitoring finds some clinics need improvements to fully comply with personnel, facility and equipment requirements.
Sample opposition to California motion for leave to amendLegalDocsPro
This sample opposition to California motion for leave to amend is used when a party wishes to oppose the request of another party for leave to amend their pleading such as an answer or complaint on the grounds of lack of diligence, long unexplained delay and prejudice. The sample on which this preview is based is 9 pages long and includes brief instructions, a memorandum of points and authorities with citations to case law supporting the opposition, sample declaration and proof of service by mail. The author is an entrepreneur and freelance paralegal who has worked in California and Federal litigation since 1995.
This document discusses guidelines related to tender processing and CVC guidelines. It provides details on different types of tenders, methods of obtaining bids, standard bid documents, earnest money deposits, performance securities, and the tender evaluation process. It emphasizes principles of public procurement like efficiency, economy, transparency, and fair treatment of suppliers. It also summarizes some key CVC guidelines related to pre-award stages, negotiations, and guidelines on tenders and using websites for procurement.
The document discusses analyzing stress in a buried branch connection using pipe stress analysis software Caesar II. The initial results using the basic soil model showed unrealistic high stresses at a tee. Further review found the basic soil model had much weaker axial than lateral soil springs. Switching to the more realistic American Lifelines Alliance soil model resulted in stress levels within acceptable limits by providing more balanced soil resistance. The lessons learned were to not rely solely on software and have a deep understanding of its limitations and assumptions.
Sample California complaint for assault and batteryLegalDocsPro
This sample California complaint for assault and battery also includes a cause of action for intentional infliction of emotional distress. The sample could be modified to add other causes of action as well. This is a preview of the sample complaint sold by LegalDocsPro.
Introduction to Offer: Advertisement, Auction and TenderPreeti Sikder
Learning Outcome: After completion of this lesson students will -
a) learn about the general principle relating to offer in case of advertisements of products and auctions placed in newspapers
b) learn about exceptions to the prima facie rules of offer.
This presentation covered key considerations for steel pipe design including history, hydraulics, pipe/trench design, joints, fittings, coatings, linings, and sustainability. For pipe/trench design, the presentation discussed calculating wall thickness based on internal pressure and external loading/deflection, and using granular bedding, flowable fill, or on-site soils for embedment. Rubber gasket joints are recommended for smaller diameters while welded joints are preferred for larger diameters. Fittings require reinforcement if above certain pressure thresholds. Coatings should be polyurethane or mortar for smaller diameters and polyurethane for larger diameters, with mortar lining typically used. The presentation emphasized designing for minimum
Variation: it’s Regulation & Management under the MDB-FIDIC (2006) & the PPA ...MMS presentation firm
Variation: it’s Regulation & Management under the MDB-FIDIC (2006) & the PPA (2011) Conditions of Construction Contracts & the Applicable Laws will help you to understand more about variation in terms international contracts and domestic contract(Ethiopian context)
The medical billing process involves several key steps:
1) Patients make appointments and provide their information;
2) Doctors examine patients, document medical records, and provide medical coding;
3) Coders assign codes to medical records which are then sent to billing;
4) Billers enter patient and visit details, submit claims to insurance, and handle payments and denials.
This document is a motion filed by the defense attorney Ruth C. Rose seeking pre-trial discovery from the prosecution related to two police officers - Deputy Clotworthy and Sergeant Smith - who were involved in the arrest of the defendant Belvin Pugh. The motion requests access to complaints against the officers, any discipline imposed as a result of investigations into complaints, and any other exculpatory or impeaching evidence within the meaning of Brady v. Maryland. It also seeks information from any civil service commission hearings involving the officers related to the alleged misconduct. The motion is made on the grounds that the defendant denies the version of events described in the police report and contends the officers falsified probable cause, and this discovery could provide impeach
Sample meet and confer declaration for motion to strike in California LegalDocsPro
This sample meet and confer declaration for a motion to strike in California is filed under Code of Civil Procedure § 435.5(a) to demonstrate compliance with the new meet and confer requirements before a motion to strike can be filed that became effective on January 1, 2018. The sample is 5 pages and includes brief instructions, sample wording and a proof of service by mail. The author is an entrepreneur and retired litigation paralegal that worked in California and Federal litigation from January 1995 through September 2017 and has created over 300 sample legal documents for sale. Note that the author is NOT an attorney and no guarantee or warranty is provided.
The Metropolitan Water Board sought to develop water from Lake Ontario as a supplementary source of water supply. Due to years of use, water treatment pump repair was needed to maintain supply.
The document discusses various aspects of contract and tender management including:
1) Different types of contracts like firm-fixed-price, cost-plus-fixed-fee, and incentive contracts that allocate risk differently between contractors and customers.
2) Key elements of the contract administration cycle including change management, quality control, and dispute resolution.
3) Reasons for contract termination like technological changes or contractor default.
4) Best practices for negotiations including defining objectives, evaluating opponents, and establishing strategies.
5) Components of a tender dossier such as technical specifications, eligibility criteria, and evaluation methods.
Acceptance in Contract and its CommunicationPreeti Sikder
Learning Objectives:
Students will :
a) learn the legal definition of acceptance and general rule of communication.
b) be able to distinguish between Bangladeshi and English law relating to acceptance
This document discusses various methods for applying foam to storage tanks for fire protection, including fixed surface systems, seal area protection, and subsurface foam injection. It provides design guidelines for each method, such as minimum application rates and durations. It also describes Williams' foam chambers and foam makers that can be used for fixed surface application through discharge outlets. The foam chambers are available in custom sizes and flows, and can accommodate dual agents. Supplementary application in diked areas is also addressed.
This document outlines rules for filing and serving lien claims with the Workers' Compensation Appeals Board in California. Key points:
- Lien claims must be allowable under Labor Code and not filed prematurely. Medical-legal costs cannot be included as liens.
- Lien claims must be filed electronically in an approved format, include required documents like proof of service and verification, and list the correct case number.
- Supporting documentation cannot be filed with lien claims except as ordered by the Appeals Board.
- Lien claims and supporting documents must be served on injured workers, employers/carriers, and their representatives when applicable.
- Amended lien claims must be clearly marked as such and also
The document describes a patent application that was filed on May 1, 2001 naming inventor H as the sole inventor. A primary examiner rejected all the claims under 35 USC 102(e) as being anticipated by a patent granted to inventors H and S that was filed on December 7, 2000. The patent application and patent define the same patentable invention. Filing a terminal disclaimer in accordance with 37 CFR 1.321(c) or filing a declaration stating the application and patent are commonly owned and the named inventor is the prior inventor under 35 USC 104 would overcome the rejection according to the patent laws and procedures in the MPEP.
The document contains questions and multiple choice answers regarding USPTO rules and procedures for reissue patents, as outlined in the MPEP. It addresses topics like what can be corrected with a Certificate of Correction, what constitutes impermissible recapture in a reissue application, and the requirements for filing reissue applications to broaden claims within two years of the original patent grant.
This document outlines procedures for applications relating to matrimonial and civil partnership proceedings in court. It discusses requirements for filing applications, providing proof of marriage or civil partnership, amendments to applications, requests for further information, disclosure of documents, and expediting decrees absolute or final orders in cases where needed. The document provides guidance on following the appropriate processes and forms, obtaining necessary documentation, responding to requests, and seeking expedited hearings when grounds for urgency arise.
This document outlines procedures for applications relating to matrimonial and civil partnership proceedings in court. It discusses requirements for filing applications, providing proof of marriage or civil partnership, amendments to applications, requests for further information, disclosure of documents, and expediting decrees absolute or final orders in cases where needed. The document provides guidance on following the appropriate processes and forms, obtaining necessary documentation, communicating with other parties, and seeking court orders in a timely manner at different stages of proceedings.
The document summarizes the key aspects of summary procedure under Order XXXVII of the Code of Civil Procedure, 1908 in India. It explains that (1) summary procedure allows for expedited adjudication of money disputes, (2) it applies to courts designated by the High Court and certain classes of suits related to bills, notes, contracts and guarantees, and (3) it provides a streamlined process where the plaintiff can obtain a quick decree if the defendant does not respond in time or is not granted leave to defend by the court.
The document discusses the rules and requirements for preliminary attachment in the Philippines. It covers the following key points in 3 sentences:
Grounds for attachment include actions involving fraud, money owed, property disputes, and defendants who may abscond. An applicant must file an affidavit and bond demonstrating sufficient cause of action and security for the claim. The sheriff then enforces the writ by inventorying and attaching enough property to satisfy the claim, and must serve related documents and make a return on actions taken.
The document summarizes rules established by the Central Government of India regarding procedures for the Cyber Regulations Appellate Tribunal. Some key points:
- The rules cover definitions, procedures for filing applications to the Tribunal, requirements for application forms and accompanying documents, service of notices to respondents, filing of replies, notification of hearing dates and locations, and decisions on applications.
- Applications must be filed in six paperback copies with the Registrar, accompanied by a fee of Rs. 2,000, and include certified copies of relevant orders and documents.
- Respondents have one month to file six paperback copies of their reply with supporting documents and proof of service to the applicant.
- Hearing dates
California anti slapp law (statute 425-16(e)(1-4)VogelDenise
This document summarizes sections of the California Code of Civil Procedure related to complaints and pleading requirements. It discusses requirements for complaints to contain a statement of facts and demand for relief. It also covers procedures for requesting and serving statements of damages, preserving the right to seek punitive damages, and forms approved by the Judicial Council. Special procedures are outlined for complaints involving personal injury, wrongful death, and lawsuits against healthcare providers or religious organizations.
- The document outlines rules for the Cyber Regulations Appellate Tribunal established under the Information Technology Act, 2000 in India.
- It details procedures for filing applications to the tribunal, serving notices, submitting replies, location and timings of hearings, and roles of the Registrar and Presiding Officer.
- The rules aim to provide an efficient process for appeals related to cyber regulations and orders in India.
Delaware Riverkeeper Legal Primer on Becoming an Intervenor in the PennEast P...Marcellus Drilling News
Slide presentation by THE Delaware Riverkeeper attorney for the anti-fossil fuel faithful training them in their legal rights as an intervenvor with the Federal Energy Regulatory Commission.
Training Session: 1 Indian Patent Process: Study of FormsBananaIP Counsels
Training Session: 1 Indian Patent Process: Study of Forms
Contact Us for Intellectual Property Services
BananaIP Counsels
Regd Office
No.40,3rd Main Road,JC Industrial Estate,
Kanakapura Road,Bangalore – 560 062.
Email: contact@bananaip.com
Telephone: +91-80-26860414 /24/34
Process of patent filling,patent infringement & its issues (1)Ankit Puri
The document outlines the process for patent filing and obtaining a patent in India. It discusses the 8 main steps: 1) filing the patent application, 2) publication, 3) opposition period, 4) request for examination, 5) first examination report, 6) addressing objections, 7) grant of patent, and 8) renewal fees. It also covers patent infringement, including what constitutes infringement, types of infringement, and several cases where companies have filed lawsuits against each other for alleged patent infringement.
The document discusses strategies and procedures for removing a case from state to federal court, including:
- Cases that can be removed include those involving diversity of citizenship, federal questions, and certain civil rights cases.
- Defendants must file a notice of removal within 30 days of receiving the state court filing and establish federal jurisdiction.
- The notice of removal can be amended within 30 days to correct deficiencies but not assert new grounds for removal.
- Cases arising from state workers' compensation laws cannot be removed to federal court.
The document discusses the use of requests to admit in civil discovery under Section 9-11-36 of the Georgia Code. Requests to admit involve asking the other party to admit or deny statements of fact or opinions to help prove a point in the case. If a party denies a request but cannot support their denial, the requesting party can file a motion and the court may order the matter admitted or require an amended answer. A party can also recover expenses including attorney's fees if they prove the matter denied in a request. Admissions are conclusively established unless withdrawn or amended by the court, which requires showing such change will help the merits and not prejudice the requesting party.
The document outlines the procedure for filing a patent application in India. Key points include:
- Only inventors, assignees, or legal heirs of deceased inventors can apply for a patent.
- There are different types of patent applications including convention, international, divisional, and patent of addition applications.
- Applications must be filed in the prescribed form along with a provisional or complete specification and applicable fees.
- The specification must include a title, description, drawings or samples, method to perform the invention, scope, and abstract.
- Priority date rules depend on whether the application is a single filing or based on an earlier application.
This document establishes an advance ruling system for valuation and rules of origin by the Bureau of Customs in the Philippines. It defines key terms and outlines the process for importers and exporters to request advance rulings, including requirements, timelines, effects of non-compliance, modifications and appeals. Requesting parties can get official and binding assessments on customs valuation and origin of goods in advance of import or export transactions.
EEOC - Agency Processing Of Formal ComplaintsVogelDenise
The document provides guidance to agencies on processing formal EEO complaints. It outlines that agencies must:
1) Acknowledge receipt of formal complaints in writing and provide notice of rights and obligations to complainants, including the right to a hearing and right to appeal.
2) Investigate complaints in a timely manner within 180 days and process mixed cases within 120 days to avoid complainants appealing.
3) Avoid fragmenting EEO complaints by properly defining the legal claim and considering all relevant supporting evidence, even if untimely, to establish potential pattern discrimination.
A Critical Study of ICC Prosecutor's Move on GAZA WarNilendra Kumar
ICC Prosecutor Karim Khan's proposal to its judges seeking permission to prosecute Israeli leaders and Hamas commanders for crimes against the law of war has serious ramifications and calls deep scrutiny.
The presentation deals with the concept of Right to Default Bail laid down under Section 167 of the Code of Criminal Procedure 1973 and Section 187 of Bharatiya Nagarik Suraksha Sanhita 2023.
Indonesian Manpower Regulation on Severance Pay for Retiring Private Sector E...AHRP Law Firm
Law Number 13 of 2003 on Manpower has been partially revoked and amended several times, with the latest amendment made through Law Number 6 of 2023. Attention is drawn to a specific part of the Manpower Law concerning severance pay. This aspect is undoubtedly one of the most crucial parts regulated by the Manpower Law. It is essential for both employers and employees to abide by the law, fulfill their obligations, and retain their rights regarding this matter.
3. § 103 Right of Public To Inspect Patent Files and
Some Application Files
If a patent application has been published, then a copy of the specification,
drawings, and all papers relating to the file of that published application may
be provided to any person upon written request and payment of the fee.
4. § 106 Control of Inspection by Assignee
The assignee of record of the entire interest in an application may intervene in
the prosecution of the application, appointing an attorney or agent of his own
choice. Such intervention, however, does not exclude the applicant from
access to the application to see that it is being prosecuted properly, unless
the assignee makes specific request to that effect
An inventor that did not sign the oath or declaration is entitled to inspect any
paper sign the application, and order copies
An inventor that did not sign the oath or declaration cannot revoke or give power
of attorney without agreement of all named inventors of the applicant
An inventor who has assigned his rights is not empowered to exclude a non-
5. § 201.06 Divisional Application
A continuation application may be filed by providing a new specification and
drawings and a newly executed declaration provided the new specification
and drawings do not contain any subject matter that would have been new
matter in the prior application
A complete continuation application by the same inventors as those named in
the prior application may be filed by providing a new and proper specification
(including one or more claims), any necessary drawings, a copy of the signed
declaration as filed in the prior application (the new specification, the claim(s),
and drawings do not contain any subject matter that would have been new
matter in the prior application), and all required fees
6. § 201.08 Continuation-in-Part Application
A CIP is an application filed during the lifetime of an earlier nonprovisional
application by the same applicant, which repeat either some or substantial
portion or all of the earlier nonprovisional application, and adds matter not
disclosed in the said earlier nonprovisional application
A CIP may only be filed under 1.53(b)
A CIP cannot be filed as a continued prosecution application under 1.53(d)
An application claiming the benefits of a provisional application under 119(e)
should not be called a CIP of the provisional application
7. § 300 Ownership and Assignment
Assignment data printed on the patent will be based solely on the information
supplied on the Issue Fee Transmittal Form
Irrespective of whether the assignee participates in the prosecution of the
application, the patent issues to the assignee if so indicated on the Issue Fee
Transmittal form
A new assignment document need not be recorded for a divisional or
continuation application where the assignment recorded in the parent
application remains the same
8. § 306 Assignment of Division, Continuation,
Substitute, and CIP in Relation to Parent Application
A prior assignment recorded against the original application is applied to the
division or continuation application because the assignment recorded against
the original application gives the assignee rights to the subject matter
common to both applications
9. § 409 Death, Legal Incapacity, or Unavailability of
Inventor
The fact that a nonsigning inventor is on vacation or out of town and is therefore
temporarily unavailable to sign the declaration is not an acceptable reason
An acceptable reason for filing an application with a declaration signed by a joint
inventor on behalf of himself and the nonsigining joint inventor is the
nonsigning joint inventor refuses to join in the application
10. § 410 Representations to the Patent Office
The certification requirement has permitted the PTO to eliminate the separate
verification requirement
11. § 500 Receipt and Handling of Mail and Papers
§ 502.01 Correspondence Submitted by Facsimile
Correspondence not permitted to be filed by facsimile transmission includes:
National patent application specification and drawing (provisional or nonprovisional) or
other correspondence for the purpose of obtaining an application filing date, other than a
continued prosecution application
Continued prosecution is permitted
§ 509 Payment of Fees
With the exception under § 1.53 an application for patent may be assigned a filing date without
payment of the basic filing fee, fees and charges payable are required to be paid in advance,
that is, at the time of requesting any action
12. § 600 Parts, Form, and Content of Application
§ 601.01 Complete Applications
The filing fee for a non-provisional application can be submitted after the filing date
A filing date for a non-provisional application is granted on the date on which a specification
containing a description and at least one claim, and any drawing required are filed
A provisional application requires:
A specification, a drawing (as prescribed), an application fee, and a cover sheet complying with
the rule
A provisional application does not require a claim
§ 601.01(c)
13. § 601.05 Bibliographic Information - ADS
The information relating to the naming of inventors and the information relating
to setting forth citizenship is governed by the oath or declaration regardless of
whether or not the ADS is filed after the oath or declaration
An ADS is a voluntary submission in either a provisional application or a
nonprovisional application
The oath or declaration governs any inconsistency with the ADS when the
inconsistency relates to the setting forth the citizenship of the inventor(s)
Captured bibliographic information derived from an application data sheet
containing errors may be recaptured by a request therefor and the submission
of a supplemental application data sheet, an oath, or declaration or a letter
14. § 605 Applicant
Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the
inventor has assigned or is under an obligation to assign an invention to file and prosecute an
application for patent as the applicant, and to permit a person who otherwise shows sufficient
proprietary interest in the matter to file and prosecute an application for patent as the applicant on
behalf of the inventor. See MPEP § 605.01 for information regarding the applicant in applications
filed on or after September 16, 2012.
For applications filed before September 16, 2012, a person to whom the inventor assigned an invention
could file and prosecute an application for patent, but the inventor is considered the applicant. See
MPEP § 605.02 for information regarding the applicant in applications filed before September 16,
2012.
15. § 608.01 Specification
The specification, including the claims, may contain chemical and mathematical
formulae, but shall not contain drawings or flow diagrams
Claims in a patent application may contain tables not necessary to conform with
§ 112
§ 608.01(n) Dependent Claims
For fee calculation purposes, a multiple dependent claim will be considered to be that number of
claims which direct reference is made therein. Also, any claim depending from a multiple
dependent claim will be considered to be that number of claims to which direct reference is
made in that multiple dependent claim.
16. § 608.01 Specification (cont.)
§ 608.01(n) Dependent Claims
A proper multiple dependent claim must refer back in the alternative only (ex. as in claims 1, 2, or
3 . . .)
A proper multiple dependent claim refers in the alternative to only one set of claims
A proper multiple dependent claim depends only from preceding claims
“Any of the preceding claims” is acceptable multiple dependent claim wording
§ 608.01(p) Completeness of Specification
It is not proper to incorporate non-essential material by reference to a hyperlink
Abandoned applications less than 20 years old can be incorporated by reference if commonly
17. § 608.02 Drawings
Unless applicant is otherwise notified in an Office action, objections to the
drawings in a utility or plant application will not be held in abeyance
A request to hold objections to drawings in abeyance will not be considered a
bona fide attempt to advance the application to final action
Correcting objected to drawings to comply and make suitable for reproduction is
a bona fide response
The Office no longer considers drawings as formal or informal. Drawings are
either acceptable or unacceptable. Drawings will be accepted by the Office if
the drawings are readable and reproducible for publication purposes.
18. § 609 Information Disclosure Statement
The practitioner must certify that no item of information contained in the IDS
was known to any individual designated more than three months prior to the
filing of the IDS.
19. § 704 Replies to a Requirement for Information
§ 704.12(b) What Constitutes a Complete Reply
A reply stating that the information required to be
submitted is unknown and/or is not readily available to
the party or parties from which it was requested will
generally be sufficient, unless the reply was
ambiguous and a more specific answer is possible
20. § 706 Rejection of Claims
A rejection involves the merits of the claim and is subject to review by the Board
If the form of the claim (as distinguished from its substance) is improper, an
objection is made
An objection, if persisted, may be reviewed only by way of petition to the
Commissioner
An example of a matter of form as to which objection is made is dependency of
a claim on a rejected claim, if the dependent claim is otherwise allowable
21. § 706.03(x) Reissue
35 U.S.C. 251 forbids the granting of a reissue “enlarging the scope of the claims of the original patent”
unless the reissue is applied for within 2 years from the grant of the original patent (or the reissue
application properly claims the benefit of a broadening reissue application filed within 2 years of the
patent grant). This is an absolute bar and cannot be excused. This prohibition has been interpreted
to apply to any claim which is broader in any respect than the claims of the original patent. Such
claims may be rejected as being barred by 35 U.S.C. 251.
For a reissue application filed prior to September 16, 2012, 35 U.S.C. 251 permits the filing of a reissue
application by the assignee of the entire interest only in cases where it does not “enlarge the scope
of the claims of the original patent.” For reissue applications filed on or after September 16, 2012,
the assignee of the entire interest may file the reissue application if (1) the application does not seek
to enlarge the scope of the claims of the original patent, or (2) the application for the original patent
was filed under 37 CFR 1.46 by the assignee of the entire interest. Such claims which do enlarge
the scope may also be rejected as barred by the statute.
A defective reissue oath affords a ground for rejecting all the claims in the reissue application.
22. § 706.07(b) Final Rejection, When Proper on First
Action
The claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a
continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are drawn to the
same invention claimed in the earlier application, and (2) would have been properly finally rejected on the grounds and art of
record in the next Office action if they had been entered in the earlier application.
The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action
immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114) where all the claims in the
application after the entry of the submission under 37 CFR 1.114 (A) are drawn to the same invention claimed in the application
prior to the entry of the submission under 37 CFR 1.114, and (B) would have been properly finally rejected on the grounds and
art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR
1.114.
It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application
contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied
entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was
raised.
It would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter
23. § 706.07(f) Time for Reply to Final Rejection
Examiner’s amendment
Where a complete first reply to a final Office action has been filed within 2 months of the final
Office action
An examiner’s amendment to place the application in condition for allowance may be made
without payment of extension fees
Where a complete first reply to a final Office action has not been filed within 2 months of the final
Office action
Applicant's authorization to make an amendment to place the application in condition for
allowance must be made either within the 3 months shortened statutory period, or
Within an extended period for reply that has been petitioned and paid for
24. § 708.02 Petition to Make Special
(c) A petition to make an application special may be filed without a fee if the
basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.
An application may be made special upon filing a petition including any
evidence showing that the applicant is 65 years of age, or more, such as a
25. § 709 Suspension of Action
The period of filing a proper reply after a final rejection is six months, after
which, the application becomes abandoned
If a reply to an outstanding Office action does not accompany an RCE, the RCE
is improper and the Office will not recognize the request for suspension
26. § 710 Period for Reply
§ 710.02(e) Final Rejection - Time for Reply
Applicant must, within two months from the date of the notice of appeal OR within the time
allowed for reply to the action from which the appeal was taken, if such time is later file a brief
The time allowed applicant for reply to the action from which the appeal was taken may be the
mail date of the Advisory Action
27. § 713 Interviews
A request for an interview prior to the first Office Action is ordinarily granted in continuing or substitute
applications. A request for an interview in all other applications before the first action is untimely and
will not be acknowledge if written, or granted if oral
Interview will not be permitted off Office premises without the authority of the Commissioner
Interview for the discussion of the patentability of a pending application will not occur before the first
Office action, unless the application is a continuing or substitute application
An interview should be had only when the nature of the case is such that the interview could serve to
develop and clarify specific issues and lead to a mutual understanding between the examiner and
the applicant, and thereby advance the prosecution of the application
28. § 714.02 Must Be Fully Responsive
The reply to a non-final Office action must present arguments pointing out the
specific distinctions believed to render the claims, including any newly
presented claims, patentable over any applied references
Even if a reply includes an amendment canceling all the claims and adding new
claims, the reply must include how the newly presented claims overcome the
rejections or point out the supposed errors by the examiner
29. § 715 Swearing Behind a Reference
It is sufficient to clearly establish conception of the invention prior to the
effective date of the reference, and diligence from just prior to the effective
date of the reference to actual reduction to practice
Applicant must show evidence of facts establishing diligence
The affidavit or declaration must state facts and produce such documentary evidence and
exhibits in support thereof as are available to show conception and completion of invention in
this country or in a NAFTA or WTO member country
30. § 716 Affidavits or Declarations Traversing Rejection
Probative evidence of commercial success to support a contention of non-
obviousness in a utility case includes:
Gross sales figures accompanied by evidence as to market share
Gross sales figures accompanied by evidence as to the time period during which the product was
sold
Gross sales figured accompanied by evidence as to what sales would normally be expected in
the market
Gross sales figures must be measured against a logical standard in order to
determine whether or not there is commercial success
A rejection on the adequacy of the enabling disclosure should be overcome by
31. § 804.02 Avoiding a Double Patenting Rejection
Statutory
A rejection based on the statutory type of double patenting can be avoided by amending the
conflicting claims so that they are not coextensive in scope
A terminal disclaimer is not effective
Use of 1.131 affidavit is inappropriate
Nonstatutory
Can be avoided by filing a terminal disclaimer in the application
The filing of a terminal disclaimer to obviate a rejection based on nonstatutory double patenting is
not an admission of the propriety of the rejection
32. § 818 Election and Reply
An immediate appeal for a restriction cannot be taken until the restriction
requirement is made final
The applicant is required to specifically point out the reasons on which he bases
his conclusions that a requirement to restrict is in error. An election must be
made even if the requirement is traversed.
33. § 1204 Notice of Appeal
PATENT APPLICANT.— An applicant for a patent, any of whose claims has
been twice rejected, may appeal from the decision of the primary examiner to
the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in a reexamination may appeal from
the final rejection of any claim by the primary examiner to the Patent Trial and
Appeal Board, having once paid the fee for such appeal.
34. § 1205 Appeal Brief
If the examiner disagrees with the reasons given, the reason for disagreement
should be addressed in the Examiner’s Answer
Appellant must file a brief under this section within two months from the date of
filing the notice of appeal
Where the applicant omits the statement required, whether the claims stand or
fall together, yet presents arguments in the argument section of the brief, the
applicant should be notified of noncompliance and given time to correct the
deficiency
Where an appeal brief fails to address any ground of rejection, appellant shall
be notified by the examiner that he must correct the defect by filing a brief
35. § 1205 Appeal Brief (cont.)
The Board has the responsibility for determining whether appeal briefs filed in patent
applications comply with 37 CFR 41.37, and will complete the determination before the
appeal brief is forwarded to the examiner for consideration. The determination should
be completed within approximately one month from the filing of the appeal brief. If the
appeal brief is determined to be compliant with the rules or it contains only minor
informalities that do not affect the Board panel’s ability to render a decision, the Board
will accept the appeal brief and forward it to the examiner for consideration. If the Board
determines that the appeal brief is non-compliant with 37 CFR 41.37 and sends
appellant a notice of non-compliant brief requiring a corrected brief, appellant will be
required to file a corrected brief within the time period set forth in the notice to avoid the
dismissal of the appeal. The Board will also have the responsibility for determining
whether corrected briefs comply with 37 CFR 41.37.
36. § 1206 Amendments and Affidavits or Other
Evidence Filed With or After Appeal
Amendments filed after the filing of a notice of appeal, but prior to the date of
filing a brief, may be admitted only to:
(A) cancel claims;
(B) comply with any requirement of form expressly set forth in a previous action;
(C) present rejected claims in better form for consideration on appeal; or
(D) amend the specification or claims upon a showing of good and sufficient reasons why the
amendment is necessary and was not earlier presented.
37. § 1206 Amendments and Affidavits or Other
Evidence Filed With or After Appeal (cont.)
An appellant must perform two affirmative acts in the brief to receive separate
consideration of the patentability of a plurality of claims that are subject to the
same rejection. The appellant must (1) state that the claims do not stand or
fall together and (2) present arguments why the claim subject to the same
rejection are separately patentable.
Where the appellant only performed the two affirmative acts with respect to
specific claims, only those claims are considered by the Board separately for
patentability
38. § 1208 Reply Briefs
The question of whether an answer contains a new ground of rejection is a
petitionable, not appealable, matter
Any allegation that an examiner’s answer contains an impermissible new
ground of rejection is waived if not timely raised by way of a petition
To avoid waiver of the right to contest the examiner’s action, the appellant must file a timely
petition.
39. § 1211 Remand by Director or Board
The Board may remand to the examiner for a fuller description of the claimed
invention
The Board may remand to the examiner for a clearer explanation of the
pertinence of the references
The Board may remand for a selection by the primary examiner of a preferred or
best ground of rejection when multiple rejections of a cumulative nature have
been made by the examiner
The Board has no authority to require the examiner to consider an affidavit
which has not been entered after final rejection and which was filed while the
application was pending before the examiner
40. § 1214 Procedure Following Decision by Board
Claims indicated as allowable prior to appeal except for their dependency from
rejected claims will be treated as if they were rejected
Where the Board reverses the rejection of the dependent claims and affirms the
rejection of the independent claims:
The examiner may convert the dependent claims into independent form by examiner’s amendment,
cancel the affirmed independent claims and allow the application
The examiner may mail an Office action setting a 1-month time limit in which the applicant may
rewrite dependent claims in independent form. If no timely reply is received, the examiner should
amend the dependant claims into independent form and allow the application
The mailing of a Board decision does not abandon an application
41. § 1308 Withdrawal from Issue
A petition to withdraw the application from issue is not required if a proper RCE
is filed before payment of the issue fee
A practitioner can file a continuing application on or before the date that the
issue fee is due and permit the parent application to become abandoned for
failure to pay the issue fee
A petition to withdraw the application from issue can be filed after payment of
the issue fee to permit the express abandonment of the application in favor of
a continuing application
A petition to withdraw the application from issue can be filed after the payment
of the issue fee to permit consideration of a RCE
42. § 1306 Issue Fee
The time period set for the payment of the issue fee is statutory and cannot be
extended. However, if payment is not timely made and the delay in making
the payment is shown to be unavoidable, upon payment of a fee for delayed
payment, it may be accepted as though no abandonment had occurred, but
there will be a reduction on the patent term adjustment for the period of
abandonment
Deferral is not available following the notice of allowance
43. § 1400 Correction of Patents
§ 1401 Reissue
35 U.S.C. 251 and pre-AIA 35 U.S.C. 251 permit the reissue of a patent to correct an error in the
patent and provide criteria for the reissue. Pre-AIA 35 U.S.C. 251 requires that any error to be
corrected must have been made “without deceptive intention.” Effective September 16, 2012,
Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended
35 U.S.C. 251 to eliminate the “without deceptive intention” clause. This law as amended
applies to reissue applications filed on or after September 16, 2012. 37 CFR 1.171 through
1.178 are rules directed to reissue.
A dependent claim is construed to contain all the limitations of the claim upon
which it depends, therefore it must be at least as narrow as the independent
claims upon which it depends and is not a broadened reissue claim
There must be at least one error in the patent to provide grounds for reissue of
44. § 1400 Correction of Patents (cont.)
In a reissue application, additions and deletions to the original patent should be
made by underlining and bracketing, respectively, except for changes made
in prior Certificates of Correction and disclaimer(s) of claims under § 1.321(a)
45. § 1400 Correction of Patents (cont.)
§ 1412.02 Recapture of Cancelled Subject Matter
Recapture occurs when the claim is broadened. Adding a limitation would narrow the claim.
§ 251 prescribes a 2-year limit for filing applications for broadening reissues
If the limitation now being omitted or broadened in a reissue was originally
presented/argued/stated in the original application to make the claims allowable over a
rejection or objection made in the original application is impermissible recapture
§ 1412.03 Broadening Reissue Claims
Broadening reissue applications must be filed within two years of issuance of the original patent
46. § 1412.04 Correction of Inventorship by Reissue
While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be
effected under the provisions of 35 U.S.C. 256 and 37 CFR 1.324 by filing a request for a Certificate
of Correction if:
(A) the only change being made in the patent is to correct the inventorship; and
(B) all parties are in agreement and the inventorship issue is not contested.
Where the provisions of 35 U.S.C. 256 and 37 CFR 1.324 do not apply, a reissue application is the
appropriate vehicle to correct inventorship.
The reissue oath or declaration pursuant to 37 CFR 1.175 must state that the applicant believes the
original patent to be wholly or partly inoperative or invalid through error of a person being incorrectly
named in an issued patent as the inventor, or through error of an inventor incorrectly not named in
an issued patent, and, for applications filed before September 16, 2012, must also state that such
error arose without any deceptive intention on the part of the applicant.
47. § 1481 Certificate of Correction
Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s
mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for
which a correction is sought. The mistake must be:
(1) of a clerical nature,
(2) of a typographical nature, or
(3) a mistake of minor character.
The second statutory requirement concerns the nature of the proposed correction. The correction must
not involve changes which would:
(1) constitute new matter or
(2) require reexamination.
48. § 1500 Design Patents
Both design and utility patents may be obtained on an article of the invention
resides both in its utility and ornamental appearance
The design for an article consists of the visual characteristics embodied in or
applied to an article
Design patent applications are not included in the PTC
A claim directed to a computer-generated icon shown on a computer screen
complies with the “article of manufacture” requirements of § 171
A claimed design may encompass multiple articles or multiple parts within an
article
49. § 1810 Filing Date Requirements
An international filing date is accorded to the earliest date on which the requirements under PCT Article
11(1) were satisfied. If the requirements under PCT Article 11(1) are not satisfied as of the date of initial
receipt of the international application papers, the receiving Office will invite applicant to correct the
deficiency within a set time limit. See PCT Article 11(2) and PCT Rule 20.3. In such case, the
international filing date will be the date on which a timely filed correction is received by the receiving
Office.
The request may be signed by an attorney or agent who is registered to practice before the USPTO
An all too common occurrence is that applicants will file an international application in the U.S. Receiving
Office and no applicant has a U.S. residence or nationality. Applicants are cautioned to be sure that at
least one applicant is a resident or national of the U.S. before filing in the U.S. Receiving Office
The international application must contain at least the following elements:
(a) an indication that it is intended as an international application,
50. § 1900 Protest
A protest may be filed by an attorney or other representative on behalf of an unnamed
principal
Information which may be relied on in a protest includes information indicating violation of
the duty of disclosure
While a protest must be complete and contain a copy of every document relied on by the
protestor, a protest without copies of prior art documents will not necessarily be ignored
A protest must be submitted prior to the date the application was published or the mailing
of a notice of allowance, which occurs first, provided the application is pending
Since a protestor is not authorized to participate in the prosecution of a pending
application, the examiner must not communicate in any manner with the protestor
51. § 2100 Patentability
The Supreme Court has held that biological materials such as microorganisms,
and non-human animals, is patentable subject matter, provided it is made by
man.
Courts have found utility for a therapeutic intervention despite the fact that an
applicant is at a very early stage in the development of a pharmaceutical
product or therapeutic regimen based on a claimed pharmacological or
bioactive compound or composition
Where the claimed and prior art products are identical or substantially identical
in structure or composition, or are produced by identical or substantially
identical processes, a prima facie case of either anticipation or obviousness
has been established
52. § 2107 Examination Guidelines for the Utility
Requirement
An applicant can sustain the burden of rebutting and overcoming a showing of
no specific and credibility utility by:
Providing reasoning or arguments rebutting the basis or logic of the prima facie showing
Amending the claims
Providing evidence in the form of a declaration rebutting the basis or logic of the prima facie
showing
Providing evidence in the form of a printed publication rebutting the basis or logic of the prima
facie showing
53. § 2111 Claim Interpretation; Broadest Reasonable
Interpretation
When the specification expressly provides a special definition for a term used in
the claims, the term must be given that special meaning
A term is given its plain meaning only when the specification does not provide a
definition for the term
While a claim is read in light of the specification, it is improper to narrow the
claim by interpreting it as including elements or steps disclosed in the
specification but not recited in the claim
The transitional term “comprising”, which is synonymous with “including,”
“containing,” or “characterized by,” is inclusive or open-ended and does not
54. § 2111 Claim Interpretation; Broadest Reasonable
Interpretation
The transitional phrase “consisting of” excludes any element, step, or ingredient
not specified in the claim
A claim which depends from a claim which “consists of” the recited elements or steps cannot add
an element or step
The transitional phrase “consisting essentially of” limits the scope of a claim to
the specified materials or steps “and those that do not materially affect the
basic and novel characteristics of the claimed invention”
55. § 2112 Rejection Based on Inherency; Burden of
Proof
Something which is old does not become patentable upon discovery of a new
property
Claiming of a new use, new function or known property which is inherently
present in the prior art does not necessarily make the claim patentable
56. § 2113 Product-by-Process Claims
The best reply to a rejection would be to argue that the claimed product has an
unexpected characteristic and to support that argument with evidence
showing that the result of the prior art patent does not posses this
characteristic compared to the claimed product
Focus is on product properties
Once the examiner provides a rationale, the burden shifts to the applicant to
come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product
The patentability of product-by-process claims is based on the product itself
57. § 2121 Prior Art; General Level of Operability
Required to Make a Prima Facie Case
When the reference relied on expressly anticipates or makes obvious all of the
elements of the claimed invention, the reference is presumed to be operable
A non-enabling reference may qualify as prior art for the purposes of
determining obviousness
A reference contains an enabling disclosure if the public was in possession of
the claimed invention before the date of invention (pre-AIA) or filing
58. § 2129 Admission as Prior Art
Figures in the application labeled “prior art” held to be an admission that what
was pictured was prior art relative to applicant’s invention
Admitted foundational discovery is a statutory bar
Where the specification discloses that the subject matter of the preamble was
invented by another before applicant’s invention, the preamble is properly
treated as prior art
59. § 2137.01 Inventorship
The inventor is not required to reduce the invention to practice
An inventor must contribute to the conception of the invention
As long as the inventor maintains intellectual domination over making the
invention, ideas, suggestions, and materials may be adopted from others
60. § 2143 Basic Requirements of Prima Facie case of
Obviousness
To establish a prima facie obviousness of a claimed invention, all of the claimed
limitations must be taught or suggested by the prior art
US patents may be used as of their filing dates to show that the claimed subject
matter is anticipated or obvious
61. § 2144 Supporting a Rejection Under § 103
When an applicant seasonably traverses an officially noticed fact, the examiner
may cite a reference teaching the noticed fact and make the next action final
The examiner should vacate a rejection based on official notice if no support for
the noticed fact can be found in response to a challenge by the applicant
An applicant is entitled to respond to a rejection by requesting reconsideration,
with or without amending the application
Obviousness of Similar and Overlapping Ranges, Amount, and Proportions
A prima facie case of obviousness exists where the claimed ranges and the prior art are close
enough that one of ordinary skill in the art would have expected them to have the same
properties
62. § 2144 Supporting a Rejection Under § 103 (cont.)
In order to rely on equivalence as a rationale supporting an obviousness
rejection, the equivalency must be recognized in the prior art, and cannot be
based on applicant’s disclosure or the mere facts that the components at
issue are functional or mechanical
63. § 2163.01 Support for the Claimed Subject Matter in
Disclosure
A written description requirement issue generally involves the question of whether the subject matter of a claim
is supported by [conforms to] the disclosure of an application as filed. If the examiner concludes that the
claimed subject matter is not supported [described] in an application as filed, this would result in a rejection
of the claim on the ground of a lack of written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112,
first paragraph, or denial of the benefit of the filing date of a previously filed application. The claim should
not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650
F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly employed as a basis for
objection to amendments to the abstract, specification or drawings attempting to add new disclosure to that
originally presented. While the test or analysis of description requirement and new matter issues is the
same, the examining procedure and statutory basis for addressing these issues differ.
64. § 2163.06 Review of New matter Objections and
Rejections
An objection and requirement to delete new matter from the specification is subject to supervisory review by
petition under § 1.181
A rejection of claims for lack of support by the specification (new matter) is reviewable by appeal to the Board
The examiner should still consider the subject matter added to the claim in making rejections based on
prior art since the new matter rejection may be overcome by applicant.
A rejection of claims is reviewable by the Board, whereas an objection and requirement to delete new matter is
subject to supervisory review by petition.
If both the claims and specification contain new matter either directly or indirectly, and there has been both a
rejection and objection by the examiner, the issue becomes appealable and should not be decided by
petition
When the claims have not been amended, per se, but the specification has been amended to add new matter, a
65. § 2172 Subject Matter Which the Inventor Regards
as the Invention
A claim which fails to interrelate essential elements of the invention as defined by applicant in the
specification may be rejected under § 112 for failure to point and and distinctly claim the invention
A claim which omits matter disclosed to be essential to the invention as described in the specification or
other statements of record may be rejected as not enabling
Failure to disclose the best mode need not rise to the level of active concealment or grossly inequitable
conduct in order to support a rejection or invalidate a patent
The best mode requirement is a separate and distinct requirement from the enablement requirement
If there is no disclosure of the best mode contemplated by the inventor at the time the application is filed,
such a defect cannot be cured by submitting an amendment seeking to put into the specification
something required to be there when the patent application was originally filed
66. § 2173 Claims Must Particularly Point Out and Distinctly
Claim the Invention
§ 2173.02 Definiteness of claim language must be analyzed, not in a vacuum, but in light of:
The content of the particular application disclosure
The teachings of the prior art
The claim interpretation that would be given by one possessing the ordinary level of skill in the
pertinent art at the time the invention was made
§ 2173.05(c) Numerical ranges and amounts Limitations
Where the invention is a non-theoretical alloy, the sum of the claimed constituents cannot exceed
100% unless the percentage is based on weight
An effective amount has been held to be indefinite when the claim fails to state the function that is
to be achieved and more than one effect can be implied from the specification
67. § 2217 Statement Applying Prior Art in a Request
Filed under 35 U.S.C. 302
A prior art patent cannot be properly applied as a ground for reexamination if it
is merely used as evidence of alleged prior public use or sale, or insufficiency
of disclosure
The prior art patent must be applied directly to the claims or relate to the
application of other prior art patents or printed publications to claims on such
grounds
68. § 2258 Scope of Ex Parte Reexamination
Rejections will not be based on matters other than patents or printed
publications
Matters that will not be considered include public use or sale, inventorship, 101, conduct issues,
etc.
69. § 2285 Copending Ex Parte Reexamination and
Reissue Proceedings
If both a reissue application and an ex parte reexamination proceeding are
pending concurrently on a patent, a decision will normally be made (A) to
merge the two proceedings or (B) to stay one of the proceedings
71. § 101
Inventorship
Only the inventor may file for a patent
Must be a joint inventor and have sufficient proprietary interest in the invention to file a patent
application on one’s behalf
Inventorship cannot be changed when there is deceptive intent
A § 101 deficiency also creates a deficiency under § 112
If compositions are in fact useless, the specification cannot have taught how to use them
It is not essential that the invention accomplish all its intended functions
72. § 102
A reference is no less anticipatory if, after disclosing the invention, the reference
then disparages it
The question whether a reference “teaches away” from the invention is
inapplicable to an anticipation analysis
An extra reference or evidence can be used to show an inherent characteristic
of the thing taught by the primary reference
73. pre-AIA § 102(b) & § 102(a)
A statutory bar cannot be overcome by acquiring the patent
On sale activities is not a proper subject matter for reexamination, and
inequitable conduct cannot be resolved or absolved by reexamination
pre-AIA § 102(b) “on sale” is “in this country”; § 102(a) “on sale” does not have
a geographic limit
74. pre-AIA § 102(a)
To perfect priority after a properly based 102(a) rejection, it is necessary to
amend the specification of the application to contain a specific reference to a
prior application having a filing date prior to the reference
75. pre-AIA § 102(e) & 102(a)(2)
The subject matter of an abandoned application, including both provisional and
non-provisional applications, referred to in a prior art US patent or US patent
application publication may be relied on in a 102(a)(2) or pre-AIA 102(e)
rejection based on that patent or patent application publication if the
disclosure of the abandoned application is actually included or incorporated
by reference in the patent
76. pre-AIA § 102 & § 102(b)
DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING
DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less
before the effective filing date of a claimed invention shall not be prior art to
the claimed invention under subsection (a)(1) if
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a joint inventor
77. pre-AIA § 102(d)
An application must issue into a patent before it can be applied in a § 102(d)
rejection
To establish a bar, the foreign patent or inventor’s certificate must be actually
granted, it need not be published
If an applicant files a foreign application, later files a US application claiming
priority based on the foreign application, and then files a CIP application
whose claims are not entitled to the filing date of the US parent, the effective
filing date of the CIP application is the filing date of the CIP. Thus, the
applicant cannot obtain the benefit of either the US parent or foreign
application filing dates.
78. pre-AIA § 102(e)
To overcome a rejection properly based on § 102(e):
May argue that the claims are patentably distinguishable from the prior art
File an affidavit or declaration showing that the reference invention is not by “another”
File an affidavit or declaration showing prior invention, if the reference is not a US patent that
either claims the same invention or claims an obvious variation of the subject matter in the
rejected claims
Refers to patents and patent applications only
If (1)…the applications are commonly assigned and (2) the effective filing dates
are different, then a provisional rejection of the later filed application should
be made
79. pre-AIA § 102(g)
A process is reduced to actual practice when it is successfully performed
The same evidence sufficient to establish a constructive reduction to practice is
not necessarily sufficient to establish actual reduction to practice
The entire period during which diligence is required must be accounted for by
either affirmative acts or acceptable excuses
Work relied upon to show reasonable diligence must be directly related to the
reduction to practice
No prior patent application nor issued patent is required for a rejection under
this section
80. pre-AIA § 103(a) and § 103
The claimed invention as a whole must be considered. The proper question is
whether the invention as a whole, not just the differences between the prior
art and the claims, would have been obvious.
An obviousness analysis requires consideration not just of what is literally
recited in the claims, but also of any properties inherent in the claimed subject
matter that are disclosed in the specification
The four factual inquiries following Graham are:
Determining the scope and contents of the prior art
Ascertaining the differences between the prior art and the claims in issue (claimed invention?)
81. pre-AIA § 103(a) and § 103
It is not necessary in order to establish a prima facie case of obviousness…that
there be a suggestion or expectation from the prior art that the claimed
[invention] will have the same or a similar utility as one newly discovered by
the applicant.
82. pre-AIA § 112, 2nd paragraph & § 112(b)
A Markush group is an acceptable form of alternative expression provided the
introductory phrase “consisting of”, and the conjunctive “and” are used
83. § 112
The written description requirement is separate and distinct from the enablement requirement
A claim which fails to interrelate essential elements of the invention as defined by applicant in the
specification may be rejected under § 112 for failure to point and and distinctly claim the invention
A claim which omits matter disclosed to be essential to the invention as described in the specification or
other statements of record may be rejected as not enabling
Failure to disclose the best mode need not rise to the level of active concealment or grossly inequitable
conduct in order to support a rejection or invalidate a patent
The best mode requirement is a separate and distinct requirement from the enablement requirement
If there is no disclosure of the best mode contemplated by the inventor at the time the application is filed,
such a defect cannot be cured by submitting an amendment seeking to put into the specification
something required to be there when the patent application was originally filed
84. § 112 (cont.)
The use of the close ended claim term “consists” in an independent claim precludes the addition of
further components in a dependent claim
The use of the exemplary language “such as” is improper in claims
An independent claim that consists of X, Y and Z is improperly broadened if the dependent claim
consists of only X and Y
An independent claim limiting a range from 50 to 60 is improperly broadened if the dependent claim
limits a range from 40 to 70
Drawings submitted after the filing date of the application may not be used to overcome any insufficiency
of the specification due to lack of an enabling disclosure
An applicant need only make one credible assertion of specific utility for the claimed invention to satisfy
§ 101 and § 112. Additional statements of utility, even if not “credible”, do not render the claimed
85. § 112 (cont.)
If the examiner concludes that the claimed subject matter is not supported in an application as filed, this
would result in a rejection of the claim on the ground of a lack of written description or denial of the
benefit of filing date of a previously filed application
86. § 119 Benefit of earlier filing date; right of priority
The inventions must be the same in the foreign and the US applications
Foreign priority benefit may be claimed to any foreign application that names a
US inventor as long the as the US named inventor of the foreign application
invention and § 119 requirements are met
Where two or more foreign applications are combined in a single US
application, the US application may claim benefit under § 119(a) to each of
the foreign applications
The right of priority provided for by 119 shall be six months in the case of design
patents
87. § 122 Confidential status of applications; publication of patent applications
§122(b)(2)(B)(iii) An applicant who has made a request under clause (i) but who
subsequently files, in a foreign country or under a multilateral international
agreement specified in clause (i), an application directed to the invention
disclosed in the application filed in the Patent and Trademark Office, shall
notify the Director of such filing not later than 45 days after the date of the
filing of such foreign or international application. A failure of the applicant to
provide such notice within the prescribed period shall result in the application
being regarded as abandoned.
88. § 133 Time for prosecuting applications
Upon failure of the applicant to prosecute the application within six months after
any action therein, of which notice has been given or mailed to the applicant,
or within such shorter time, not less than thirty days, as fixed by the Director
in such action, the application shall be regarded as abandoned by the parties
thereto.
A shortened time period for reply is not identified as a statutory period subject to
§ 133. Thus, extension of time up to 5 months under § 1.136(a), followed by
additional time under § 1.136(b), when appropriate, are permitted
89. pre-AIA § 251 & § 251 Reissue of Defective Patents
No reissued patent shall be granted enlarging the scope of the claims of the
original patent unless applied for within two years from the grant of the
original patent.
Whenever any patent is, through error, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing, or by reason of the
patentee claiming more or less than he had a right to claim in the patent, the
Director shall, on the surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention disclosed in the original
patent, and in accordance with a new and amended application, for the
unexpired part of the term of the original patent. No new matter shall be
introduced into the application for reissue.
90. § 371 National Stage; Commencement
A copy of the international application and the basic national fee necessary to
enter the national stage as required by 371(c) may not be submitted by
facsimile transmission
92. § 1.14 Patent applications preserved in confidence.
If a redacted copy of the application was used for the patent application
publication, the copy of the specification, drawings, and papers may be
limited to a redacted copy
93. § 1.27 Small entity status
Not all fees are subject to the small entity reduction
The fee for recording a document affecting title is not entitled to a reduction
If one grants a license to the Government resulting from a rights determination, it will not constitute a
license so as to prohibit claiming small entity status
One may establish small entity status by a written assertion of entitlement to small entity status
While no specific words or wording are required to assert small entity status, the intent to assert small
entity status must be clearly indicted in order to comply with the assertion requirement
The refiling of an application as a continuation, divisional, or continuation-in-part application, including a
continued prosecution, of the filing of a reissue application, requires a new assertion as to continued
entitlement to small entity status for the continuing or reissue application
Where an assignment of rights . . . to other parties who are small entities occurs subsequent to an
94. § 1.28 Refunds and errors in small entity status
If small entity status is established in good faith and the small entity fees are
paid in good faith, and it is later discovered that such status as a small entity
was established in error, the error will be excused upon compliance with the
separate submission and itemization requirements and the deficiency
payment requirement
The only mechanism for correcting a good faith error in claiming small entity
status is by filing a request in compliance with § 1.28(c)
95. § 1.83 Content of Drawing
If subject matter capable of illustration is originally claimed and it is not shown in
the drawing, the claim is not rejected by applicant is required to add it to the
drawing. Examiner shall require such additional illustration within a time
period of not less than two months from the date of the sending of a notice
thereof.
Drawings submitted after the filing date of the application may not be used to overcome any
insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate
disclosure therein, or to supplement the original disclosure thereof for the purpose of
interpretation of the scope of any claim.
96. § 1.321
(a) A patentee may disclaim or dedicate to the public . . . any terminal part of the
term, of the patent granted
97. § 1.136 Extension of time
§ 1.136(a)(1) If an applicant is required to reply within a nonstatutory or
shortened statutory time period, applicant may extend the time period for
reply up to the earlier of the expiration of any maximum period set by statute
or five months after the time period set for reply, if a petition for an extension
of time and the fee set in § 1.17(a) are filed, unless . . .
98. § 1.137 Revival of abandoned application, or
terminated or limited reexamination prosecution.
(f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional
application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely
notify the Office of the filing of an application in a foreign country or under a
multinational treaty that requires publication of applications eighteen months after
filing, may be revived pursuant to this section. The reply requirement of paragraph
(c) of this section is met by the notification of such filing in a foreign country or
under a multinational treaty, but the filing of a petition under this section will not
operate to stay any period for reply that may be running against the application.
100. Design patents shall be granted for the term of fourteen years from the date of
grant
Upon written request, a person citing patents and printed publications to the
Office that the person believes has a bearing on the patentability of a
particular patent, may request that his or her name remain confidential
Power of attorney
Powers of attorney to firms filed in executed applications filed after 1971, are not recognized by
the PTO
Power of attorney must be for a(n) attorney(s) or agent(s)
An assignment will not itself operate as a revocation of a power or authorization previously given
Revocation of the power of the principal attorney or agent revokes powers granted by him to
other attorneys or agents
101. Antedate means “to come (before) something”, “to precede in time”
After a proper final rejection by a primary examiner, review of new matter
becomes appealable and should not be decided by petition
Note primary examiner
Lack of support by specification (new matter) is reviewable by appeal
Objection and requirement to delete new matter from specification is subject to
supervisory review by petition
For a nonprovisional application to receive a filing date, an oath or declaration
can be submitted after the filing date
All patents should use the metric units followed by the equivalent English units
when describing their inventions in the specifications of patent applications