Patent Law FAQ

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

For more information on certified copy, visit: certified copy.

For more information on foreign application, visit: foreign application.

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:

• The filing date of the CPA request
• The parent application number

The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.

For more information on USPTO filing procedures, visit: USPTO filing procedures.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

English translations of non-English language foreign applications are not always required. However, 37 CFR 1.55(g)(3) specifies three situations where an English translation may be necessary:

“An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference or derivation proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.”

If a translation is required, it must be filed with a statement certifying that the translation is accurate. This ensures that the USPTO can properly evaluate the priority claim when necessary for examination or proceedings.

To learn more:

• English translation
• foreign priority documents
• patent application
• language requirements

Incorporating by reference in patent applications can have significant impacts:

• It allows applicants to include the content of another document without reproducing it in full.
• The incorporated material becomes part of the application as if it were explicitly included.
• It can provide support for claims and help meet disclosure requirements.

MPEP 211.05 mentions:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.

To learn more:

• incorporating by reference
• patent applications
• disclosure requirements
• claim support

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

For more information on Divisional application, visit: Divisional application.

For more information on patent law, visit: patent law.

For more information on provisional application, visit: provisional application.

For more information on USPTO, visit: USPTO.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

If there’s an error in the preprinted prior application data, the following steps should be taken:

1. If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
2. After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
3. If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
4. In some cases, a petition for an unintentionally delayed benefit claim may also be required.

The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:

• Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
• Applications that disclose similar subject matter
• Prior art references from one application that are material to patentability of another application

The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.

It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.

To learn more:

• Copending Applications
• Duty of Disclosure
• Material Information
• Prior Art
• Patent Examination

Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:

• Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
• Applications that disclose similar subject matter
• Prior art references from one application that are material to patentability of another application

The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.

It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.

To learn more:

• Copending Applications
• Duty of Disclosure
• Material Information
• Prior Art
• Patent Examination

A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:

• The filing date of the CPA request
• The parent application number

The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.

For more information on USPTO filing procedures, visit: USPTO filing procedures.

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

For more information on Divisional application, visit: Divisional application.

For more information on patent law, visit: patent law.

For more information on provisional application, visit: provisional application.

For more information on USPTO, visit: USPTO.

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

If there’s an error in the preprinted prior application data, the following steps should be taken:

1. If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
2. After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
3. If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
4. In some cases, a petition for an unintentionally delayed benefit claim may also be required.

The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

1. Does the claim recite a mathematical relationship, formula, equation, or calculation?
2. Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“

Examples of mathematical concepts considered abstract ideas include:

• A formula for computing an alarm limit (Parker v. Flook)
• A method of hedging risk (Bilski v. Kappos)
• An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

To learn more:

• mathematical concepts
• abstract ideas
• patent eligibility
• mathematical relationships
• mathematical formulas
• mathematical calculations

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“

In this context, drawings are significant because:

• They provide a visual representation of the inventor’s mental picture of the invention.
• Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
• Drawings can help prove that the invention was “ready for patenting” at the time of conception.
• They can serve as corroborating evidence to support the inventor’s testimony about conception.

The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

To learn more:

• patent drawings
• proof of conception
• inventor’s mental picture
• visual representation
• patent evidence

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

• A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
• A specific improvement to the way computers operate (Enfish)
• A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

To learn more:

• patent eligibility
• computer functionality
• Alice/Mayo test
• judicial exception
• abstract idea

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:

“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”

This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.

To learn more:

• continuation-in-part
• CIP
• parent application
• pre-AIA 35 U.S.C. 102(e)
• prior art

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

To learn more:

• Alice/Mayo test
• patent eligibility
• judicial exceptions
• abstract ideas
• laws of nature
• natural phenomena

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

To learn more:

• Alice/Mayo test
• patent eligibility
• judicial exceptions
• abstract ideas
• laws of nature
• natural phenomena

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

1. Does the claim recite a mathematical relationship, formula, equation, or calculation?
2. Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“

Examples of mathematical concepts considered abstract ideas include:

• A formula for computing an alarm limit (Parker v. Flook)
• A method of hedging risk (Bilski v. Kappos)
• An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

To learn more:

• mathematical concepts
• abstract ideas
• patent eligibility
• mathematical relationships
• mathematical formulas
• mathematical calculations

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

• A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
• A specific improvement to the way computers operate (Enfish)
• A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

To learn more:

• patent eligibility
• computer functionality
• Alice/Mayo test
• judicial exception
• abstract idea

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:

“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”

This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.

To learn more:

• continuation-in-part
• CIP
• parent application
• pre-AIA 35 U.S.C. 102(e)
• prior art

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“

In this context, drawings are significant because:

• They provide a visual representation of the inventor’s mental picture of the invention.
• Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
• Drawings can help prove that the invention was “ready for patenting” at the time of conception.
• They can serve as corroborating evidence to support the inventor’s testimony about conception.

The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

To learn more:

• patent drawings
• proof of conception
• inventor’s mental picture
• visual representation
• patent evidence

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

For more information on certified copy, visit: certified copy.

For more information on foreign application, visit: foreign application.

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. If granted, file the following at least three working days prior to the interview:
   • An informal written statement of the issues to be discussed
   • An informal copy of any proposed claims to be discussed
3. Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

• ex parte reexamination
• patent interviews
• interview preparation
• USPTO procedures

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. If granted, file the following at least three working days prior to the interview:
   • An informal written statement of the issues to be discussed
   • An informal copy of any proposed claims to be discussed
3. Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

• ex parte reexamination
• patent interviews
• interview preparation
• USPTO procedures

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

The USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

To correct an error in a recorded assignment document at the USPTO, you have two main options:

• Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
• Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”

For more information on assignment correction, visit: assignment correction.

For more information on cover sheet, visit: cover sheet.

For more information on USPTO, visit: USPTO.

The USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

To correct an error in a recorded assignment document at the USPTO, you have two main options:

• Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
• Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”

For more information on assignment correction, visit: assignment correction.

For more information on cover sheet, visit: cover sheet.

For more information on USPTO, visit: USPTO.

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.

The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’

For more information on patent application requirements, visit: patent application requirements.

The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.

The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’

For more information on patent application requirements, visit: patent application requirements.

The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:

A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.

This means that:

• If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
• The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
• Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.

However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.

To learn more:

• subsidiary
• large entity
• small entity status
• affiliation

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:

• File a petition to the USPTO, accompanied by the required petition fee
• Provide arguments and evidence supporting why the application should be granted the desired filing date
• If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:

• File a petition to the USPTO, accompanied by the required petition fee
• Provide arguments and evidence supporting why the application should be granted the desired filing date
• If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

1. Does the claim recite a mathematical relationship, formula, equation, or calculation?
2. Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“

Examples of mathematical concepts considered abstract ideas include:

• A formula for computing an alarm limit (Parker v. Flook)
• A method of hedging risk (Bilski v. Kappos)
• An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

To learn more:

• mathematical concepts
• abstract ideas
• patent eligibility
• mathematical relationships
• mathematical formulas
• mathematical calculations

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

For more information on certified copy, visit: certified copy.

For more information on foreign application, visit: foreign application.

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:

• The filing date of the CPA request
• The parent application number

The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.

For more information on USPTO filing procedures, visit: USPTO filing procedures.

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

How do I cite non-English language documents in an IDS?

When citing non-English language documents in an Information Disclosure Statement (IDS), follow these guidelines:

• Provide a concise explanation of the relevance of the document.
• Include an English language translation or abstract if available.
• If a translation is not available, indicate the language of the document.

According to MPEP 609.04(a): “Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office.”

Properly citing non-English documents ensures the examiner can consider their relevance to your application.

To learn more:

• IDS
• Information Disclosure Statement
• Non-English documents
• Patent application

The MPEP provides guidance on what constitutes a valid mailing address for inventors in patent applications. According to MPEP 602.08(a):

“The inventor’s mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor’s home or business address is acceptable as the mailing address. A post office box is also acceptable.”

The mailing address should include the ZIP Code designation. It’s important to note that the address of an attorney with instructions to forward communications is not sufficient, as the purpose is to enable direct communication between the USPTO and the inventor if necessary.

To learn more:

• Inventor Mailing Address
• Patent Application
• Inventor Information
• USPTO Communication

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. If granted, file the following at least three working days prior to the interview:
   • An informal written statement of the issues to be discussed
   • An informal copy of any proposed claims to be discussed
3. Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

• ex parte reexamination
• patent interviews
• interview preparation
• USPTO procedures

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:

A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.

This means that:

• If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
• The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
• Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.

However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.

To learn more:

• subsidiary
• large entity
• small entity status
• affiliation

English translations of non-English language foreign applications are not always required. However, 37 CFR 1.55(g)(3) specifies three situations where an English translation may be necessary:

“An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference or derivation proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.”

If a translation is required, it must be filed with a statement certifying that the translation is accurate. This ensures that the USPTO can properly evaluate the priority claim when necessary for examination or proceedings.

To learn more:

• English translation
• foreign priority documents
• patent application
• language requirements

Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:

• Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
• Applications that disclose similar subject matter
• Prior art references from one application that are material to patentability of another application

The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.

It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.

To learn more:

• Copending Applications
• Duty of Disclosure
• Material Information
• Prior Art
• Patent Examination

The USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

If there’s an error in the preprinted prior application data, the following steps should be taken:

1. If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
2. After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
3. If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
4. In some cases, a petition for an unintentionally delayed benefit claim may also be required.

The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)

To correct an error in a recorded assignment document at the USPTO, you have two main options:

• Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
• Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”

For more information on assignment correction, visit: assignment correction.

For more information on cover sheet, visit: cover sheet.

For more information on USPTO, visit: USPTO.

Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:

• Drawings can be corrected, revised, or added if no new matter is introduced.
• The applicant must submit a proposed drawing correction in reply to the Office action.
• For non-provisional applications, replacement sheets of corrected drawings must be submitted.
• For provisional applications, corrected drawings may be submitted as an amendment to the application.

The MPEP states: ‘Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.’ This ensures that the entire drawing set remains consistent and complete.

To learn more:

• drawing corrections
• patent application amendments
• replacement sheets
• USPTO requirements

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“

In this context, drawings are significant because:

• They provide a visual representation of the inventor’s mental picture of the invention.
• Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
• Drawings can help prove that the invention was “ready for patenting” at the time of conception.
• They can serve as corroborating evidence to support the inventor’s testimony about conception.

The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

To learn more:

• patent drawings
• proof of conception
• inventor’s mental picture
• visual representation
• patent evidence

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

• A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
• A specific improvement to the way computers operate (Enfish)
• A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

To learn more:

• patent eligibility
• computer functionality
• Alice/Mayo test
• judicial exception
• abstract idea

Incorporating by reference in patent applications can have significant impacts:

• It allows applicants to include the content of another document without reproducing it in full.
• The incorporated material becomes part of the application as if it were explicitly included.
• It can provide support for claims and help meet disclosure requirements.

MPEP 211.05 mentions:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.

To learn more:

• incorporating by reference
• patent applications
• disclosure requirements
• claim support

Yes, you can change the order of inventors’ names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):

37 CFR 1.48(f) … allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).

To change the order of inventors’ names, you must:

• Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
• Pay the processing fee set forth in 37 CFR 1.17(i).

Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.

To learn more:

• inventor order
• patent application
• name change
• ADS
• application data sheet

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

To correct inventorship in a provisional application, you must follow the procedure outlined in 37 CFR 1.48(d). The requirements include:

• A request signed by a party set forth in 37 CFR 1.33(b) to correct the inventorship, identifying each inventor by their legal name
• The processing fee set forth in 37 CFR 1.17(q)

The MPEP advises, When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors.

To learn more:

• inventorship correction
• provisional application
• processing fee
• cover sheet

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:

• If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
• If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.

The MPEP further states:

“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”

When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.

To learn more:

• Information Disclosure Statement
• IDS
• continuation application
• divisional application
• continuation-in-part application

Submitting informal drawings in a patent application can have several consequences:

• The application may be considered incomplete, potentially affecting the filing date.
• The examiner may object to the drawings and require formal drawings to be submitted.
• It may delay the examination process.
• In some cases, it could result in a loss of patent rights if not corrected in time.

MPEP 608.02(b) states: ‘The Office no longer considers drawings as formal or informal; drawings are either acceptable or not acceptable. Drawings will be accepted by the Office of Patent Application Processing (OPAP) if the drawings meet the requirements of 37 CFR 1.84(a), (b), (c), and (e) and are capable of reproduction.’

It’s important to note that while the USPTO may accept informal drawings initially, they may still be objected to during examination, requiring corrections to be made.

To learn more:

• informal drawings
• patent application
• drawing requirements

To learn more:

• USPTO requirements
• examination delays

Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:

“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”

This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.

To learn more:

• continuation-in-part
• CIP
• parent application
• pre-AIA 35 U.S.C. 102(e)
• prior art

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

To learn more:

• Alice/Mayo test
• patent eligibility
• judicial exceptions
• abstract ideas
• laws of nature
• natural phenomena

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

For more information on Divisional application, visit: Divisional application.

For more information on patent law, visit: patent law.

For more information on provisional application, visit: provisional application.

For more information on USPTO, visit: USPTO.

An oath is a sworn statement made before a person authorized to administer oaths, while a declaration is a written statement that can be used in lieu of an oath. According to MPEP 602, “A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68.” Declarations are often preferred because they don’t require appearing before an official and are easier to process electronically.

To learn more:

• oath
• declaration
• patent application
• USPTO
• MPEP 602

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:

• File a petition to the USPTO, accompanied by the required petition fee
• Provide arguments and evidence supporting why the application should be granted the desired filing date
• If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

The Brief Summary of Invention should be closely aligned with the claims in a patent application. MPEP 608.01(d) states, “Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.” Additionally, the MPEP emphasizes that “The brief summary of invention should be consistent with the subject matter of the claims.” This means that the summary should accurately reflect the invention as it is defined in the claims, focusing on the key aspects that make the invention patentable.

To learn more:

• Brief Summary
• Patent Claims
• Invention Description
• Patent Drafting

The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.

The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’

For more information on patent application requirements, visit: patent application requirements.

What are the consequences of not filing an IDS or submitting an incomplete IDS?

Failing to file an Information Disclosure Statement (IDS) or submitting an incomplete one can have serious consequences:

• Duty of Disclosure: Violating the duty of disclosure can lead to charges of inequitable conduct.
• Patent Invalidity: The patent may be held unenforceable if material information was intentionally withheld.
• Prosecution History Estoppel: Failure to disclose prior art may limit the scope of patent claims in future litigation.

MPEP 609 states: “The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by 37 CFR 1.97(b)-(d) and 1.98.”

It’s crucial to file a complete and timely IDS to avoid these potential pitfalls and ensure the validity and enforceability of your patent.

To learn more:

• IDS
• Information Disclosure Statement
• Patent validity
• Duty of disclosure

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

What is the ‘infringement test’ for dependent claims in patent applications?

The ‘infringement test’ is a crucial concept in determining the proper dependency of claims in patent applications. As described in MPEP 608.01(n):

‘One test for a proper dependent claim is that the dependent claim must be narrower than the claim(s) from which it depends. In other words, if a dependent claim does not further limit the scope of the claim(s) from which it depends, it is not a proper dependent claim.’

The infringement test states that:

• Any subject matter that would infringe the independent claim must also infringe the dependent claim.
• If it’s possible to infringe the independent claim without infringing the dependent claim, the dependent claim is improper.

This test ensures that dependent claims properly narrow the scope of the claims they depend from, maintaining the hierarchical structure of patent claims.

To learn more:

• infringement test
• dependent claims
• patent application

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

1. Does the claim recite a mathematical relationship, formula, equation, or calculation?
2. Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“

Examples of mathematical concepts considered abstract ideas include:

• A formula for computing an alarm limit (Parker v. Flook)
• A method of hedging risk (Bilski v. Kappos)
• An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

To learn more:

• mathematical concepts
• abstract ideas
• patent eligibility
• mathematical relationships
• mathematical formulas
• mathematical calculations

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

For more information on certified copy, visit: certified copy.

For more information on foreign application, visit: foreign application.

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:

• The filing date of the CPA request
• The parent application number

The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.

For more information on USPTO filing procedures, visit: USPTO filing procedures.

According to 37 CFR 1.9(a)(1), a national application is defined as:

• A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
• An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
• An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

How do I cite non-English language documents in an IDS?

When citing non-English language documents in an Information Disclosure Statement (IDS), follow these guidelines:

• Provide a concise explanation of the relevance of the document.
• Include an English language translation or abstract if available.
• If a translation is not available, indicate the language of the document.

According to MPEP 609.04(a): “Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office.”

Properly citing non-English documents ensures the examiner can consider their relevance to your application.

To learn more:

• IDS
• Information Disclosure Statement
• Non-English documents
• Patent application

The MPEP provides guidance on what constitutes a valid mailing address for inventors in patent applications. According to MPEP 602.08(a):

“The inventor’s mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor’s home or business address is acceptable as the mailing address. A post office box is also acceptable.”

The mailing address should include the ZIP Code designation. It’s important to note that the address of an attorney with instructions to forward communications is not sufficient, as the purpose is to enable direct communication between the USPTO and the inventor if necessary.

To learn more:

• Inventor Mailing Address
• Patent Application
• Inventor Information
• USPTO Communication

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. If granted, file the following at least three working days prior to the interview:
   • An informal written statement of the issues to be discussed
   • An informal copy of any proposed claims to be discussed
3. Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

• ex parte reexamination
• patent interviews
• interview preparation
• USPTO procedures

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:

A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.

This means that:

• If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
• The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
• Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.

However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.

To learn more:

• subsidiary
• large entity
• small entity status
• affiliation

English translations of non-English language foreign applications are not always required. However, 37 CFR 1.55(g)(3) specifies three situations where an English translation may be necessary:

“An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference or derivation proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.”

If a translation is required, it must be filed with a statement certifying that the translation is accurate. This ensures that the USPTO can properly evaluate the priority claim when necessary for examination or proceedings.

To learn more:

• English translation
• foreign priority documents
• patent application
• language requirements

Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:

• Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
• Applications that disclose similar subject matter
• Prior art references from one application that are material to patentability of another application

The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.

It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.

To learn more:

• Copending Applications
• Duty of Disclosure
• Material Information
• Prior Art
• Patent Examination

The USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

If there’s an error in the preprinted prior application data, the following steps should be taken:

1. If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
2. After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
3. If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
4. In some cases, a petition for an unintentionally delayed benefit claim may also be required.

The MPEP states: “Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.” (MPEP 202)

To correct an error in a recorded assignment document at the USPTO, you have two main options:

• Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
• Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”

For more information on assignment correction, visit: assignment correction.

For more information on cover sheet, visit: cover sheet.

For more information on USPTO, visit: USPTO.

Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:

• Drawings can be corrected, revised, or added if no new matter is introduced.
• The applicant must submit a proposed drawing correction in reply to the Office action.
• For non-provisional applications, replacement sheets of corrected drawings must be submitted.
• For provisional applications, corrected drawings may be submitted as an amendment to the application.

The MPEP states: ‘Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.’ This ensures that the entire drawing set remains consistent and complete.

To learn more:

• drawing corrections
• patent application amendments
• replacement sheets
• USPTO requirements

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

“A conception must encompass all limitations of the claimed invention” and “is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.“

In this context, drawings are significant because:

• They provide a visual representation of the inventor’s mental picture of the invention.
• Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
• Drawings can help prove that the invention was “ready for patenting” at the time of conception.
• They can serve as corroborating evidence to support the inventor’s testimony about conception.

The MPEP also notes: “The inventor’s consideration of all the structural details is not required,” suggesting that while drawings are important, they don’t need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

To learn more:

• patent drawings
• proof of conception
• inventor’s mental picture
• visual representation
• patent evidence

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

• A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
• A specific improvement to the way computers operate (Enfish)
• A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

To learn more:

• patent eligibility
• computer functionality
• Alice/Mayo test
• judicial exception
• abstract idea

Incorporating by reference in patent applications can have significant impacts:

• It allows applicants to include the content of another document without reproducing it in full.
• The incorporated material becomes part of the application as if it were explicitly included.
• It can provide support for claims and help meet disclosure requirements.

MPEP 211.05 mentions:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.

To learn more:

• incorporating by reference
• patent applications
• disclosure requirements
• claim support

Yes, you can change the order of inventors’ names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):

37 CFR 1.48(f) … allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).

To change the order of inventors’ names, you must:

• Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
• Pay the processing fee set forth in 37 CFR 1.17(i).

Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.

To learn more:

• inventor order
• patent application
• name change
• ADS
• application data sheet

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

To correct inventorship in a provisional application, you must follow the procedure outlined in 37 CFR 1.48(d). The requirements include:

• A request signed by a party set forth in 37 CFR 1.33(b) to correct the inventorship, identifying each inventor by their legal name
• The processing fee set forth in 37 CFR 1.17(q)

The MPEP advises, When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors.

To learn more:

• inventorship correction
• provisional application
• processing fee
• cover sheet

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

“The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public.”

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system’s goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

To learn more:

• enablement requirement
• patent disclosure
• public possession
• patent law
• invention description

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:

• If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
• If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.

The MPEP further states:

“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”

When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.

To learn more:

• Information Disclosure Statement
• IDS
• continuation application
• divisional application
• continuation-in-part application

Submitting informal drawings in a patent application can have several consequences:

• The application may be considered incomplete, potentially affecting the filing date.
• The examiner may object to the drawings and require formal drawings to be submitted.
• It may delay the examination process.
• In some cases, it could result in a loss of patent rights if not corrected in time.

MPEP 608.02(b) states: ‘The Office no longer considers drawings as formal or informal; drawings are either acceptable or not acceptable. Drawings will be accepted by the Office of Patent Application Processing (OPAP) if the drawings meet the requirements of 37 CFR 1.84(a), (b), (c), and (e) and are capable of reproduction.’

It’s important to note that while the USPTO may accept informal drawings initially, they may still be objected to during examination, requiring corrections to be made.

To learn more:

• informal drawings
• patent application
• drawing requirements

To learn more:

• USPTO requirements
• examination delays

Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:

“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”

This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.

To learn more:

• continuation-in-part
• CIP
• parent application
• pre-AIA 35 U.S.C. 102(e)
• prior art

MPEP 2114 provides guidance on distinguishing apparatus claims from method claims, particularly when functional language is involved. The manual states:

“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”

This means that for apparatus claims, the focus should be on the structural elements rather than how the apparatus functions. In contrast, method claims are defined by the steps or actions performed. The MPEP further clarifies:

“The recitation of a new intended use for an old product does not make a claim to that old product patentable.”

This highlights that merely describing a new way to use an existing apparatus doesn’t make it patentable. To be patentable, an apparatus claim must have structural differences from the prior art. If an applicant wants to protect a specific way of using an apparatus, they should consider filing method claims in addition to apparatus claims.

To learn more:

• apparatus claims
• method claims
• functional language
• structural elements

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

The Alice/Mayo test, also known as the Mayo test, is a two-part framework established by the Supreme Court for determining patent subject matter eligibility. According to the MPEP:

“The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). … If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.”

This test helps examiners and courts evaluate whether a claimed invention is directed to a judicial exception and, if so, whether it includes additional elements that transform it into patent-eligible subject matter.

To learn more:

• Alice/Mayo test
• patent eligibility
• judicial exceptions
• abstract ideas
• laws of nature
• natural phenomena

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

For more information on Divisional application, visit: Divisional application.

For more information on patent law, visit: patent law.

For more information on provisional application, visit: provisional application.

For more information on USPTO, visit: USPTO.

An oath is a sworn statement made before a person authorized to administer oaths, while a declaration is a written statement that can be used in lieu of an oath. According to MPEP 602, “A declaration may be submitted in lieu of an oath in any document filed in the Office provided the declaration complies with the requirements of 37 CFR 1.68.” Declarations are often preferred because they don’t require appearing before an official and are easier to process electronically.

To learn more:

• oath
• declaration
• patent application
• USPTO
• MPEP 602

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:

• File a petition to the USPTO, accompanied by the required petition fee
• Provide arguments and evidence supporting why the application should be granted the desired filing date
• If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

The Brief Summary of Invention should be closely aligned with the claims in a patent application. MPEP 608.01(d) states, “Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.” Additionally, the MPEP emphasizes that “The brief summary of invention should be consistent with the subject matter of the claims.” This means that the summary should accurately reflect the invention as it is defined in the claims, focusing on the key aspects that make the invention patentable.

To learn more:

• Brief Summary
• Patent Claims
• Invention Description
• Patent Drafting

The ‘reasonable inquiry’ requirement, as described in 37 CFR 11.18(b)(2), mandates that submissions to the USPTO be made ‘to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances.’ This standard is similar to Rule 11 of the Federal Rules of Civil Procedure.

The MPEP clarifies: An ‘inquiry reasonable under the circumstances’ requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The federal courts have stated in regard to the ‘reasonable inquiry’ requirement of Fed. R. Civ. P. 11: In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands ‘an objective determination of whether a sanctioned party’s conduct was reasonable under the circumstances.’

For more information on patent application requirements, visit: patent application requirements.

What are the consequences of not filing an IDS or submitting an incomplete IDS?

Failing to file an Information Disclosure Statement (IDS) or submitting an incomplete one can have serious consequences:

• Duty of Disclosure: Violating the duty of disclosure can lead to charges of inequitable conduct.
• Patent Invalidity: The patent may be held unenforceable if material information was intentionally withheld.
• Prosecution History Estoppel: Failure to disclose prior art may limit the scope of patent claims in future litigation.

MPEP 609 states: “The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by 37 CFR 1.97(b)-(d) and 1.98.”

It’s crucial to file a complete and timely IDS to avoid these potential pitfalls and ensure the validity and enforceability of your patent.

To learn more:

• IDS
• Information Disclosure Statement
• Patent validity
• Duty of disclosure

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

What is the ‘infringement test’ for dependent claims in patent applications?

The ‘infringement test’ is a crucial concept in determining the proper dependency of claims in patent applications. As described in MPEP 608.01(n):

‘One test for a proper dependent claim is that the dependent claim must be narrower than the claim(s) from which it depends. In other words, if a dependent claim does not further limit the scope of the claim(s) from which it depends, it is not a proper dependent claim.’

The infringement test states that:

• Any subject matter that would infringe the independent claim must also infringe the dependent claim.
• If it’s possible to infringe the independent claim without infringing the dependent claim, the dependent claim is improper.

This test ensures that dependent claims properly narrow the scope of the claims they depend from, maintaining the hierarchical structure of patent claims.

To learn more:

• infringement test
• dependent claims
• patent application