Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

Here’s the complete FAQ:

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'MPEP 306-Assignment of Division (1)

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

and Continuation-in-Part in Relation to Parent Application' (1)

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

MPEP 106-Control of Inspection by Assignee (2)

The filing date of a patent application can affect the prosecution rights of assignees. MPEP 106.01 distinguishes between applications filed before and after September 16, 2012:

  • For applications filed before September 16, 2012: See MPEP ยง 324 for information on prosecution by the assignee.
  • For applications filed on or after September 16, 2012: See MPEP ยง 325 for details on prosecution by the assignee.

The MPEP states: “For information pertaining to prosecution by the assignee, see MPEP ยง 324 (for applications filed before September 16, 2012) and MPEP ยง 325 (for applications filed on or after September 16, 2012).”

This distinction is important because the America Invents Act, which went into effect on September 16, 2012, introduced changes to patent law that affected assignee rights and procedures.

For more information on America Invents Act, visit: America Invents Act.

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

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP ยง 325 for applications filed on or after September 16, 2012.

MPEP 200 - Types and Status of Application; Benefit and Priority (4)

The statement requirement for transition applications was introduced as part of the implementation of the first inventor to file provisions of the America Invents Act (AIA). Transition applications are:

  • Nonprovisional applications filed on or after March 16, 2013
  • Applications that claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013

The statement requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6). As stated in the MPEP:

The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (unless the later-filed application is a nonprovisional international design application).

The statement must be provided within specified time limits. Applicants are not required to provide the statement if they reasonably believe the application does not contain claims with an effective filing date on or after March 16, 2013.

For more information on America Invents Act, visit: America Invents Act.

For more information on first inventor to file, visit: first inventor to file.

For more information on transition applications, visit: transition applications.

The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:

  • For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
  • For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.

The MPEP states:

For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.

This change reflects the America Invents Act’s modifications to U.S. patent law.

For more information on America Invents Act, visit: America Invents Act.

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

For more information on oath or declaration, visit: oath or declaration.

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

The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:

  • For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
  • For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.

The MPEP states for post-AIA applications:

37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.

For more information on America Invents Act, visit: America Invents Act.

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

For more information on inventorship, visit: inventorship.

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

How does the AIA affect priority claims for applications filed on or after March 16, 2013?

The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:

“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”

This change means that:

  • The effective filing date can now include foreign priority dates, not just domestic benefit dates.
  • The first-to-file system replaced the first-to-invent system for determining priority.
  • Prior art is now determined based on the effective filing date, including foreign priority dates.

These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.

For more information on America Invents Act, visit: America Invents Act.

For more information on effective filing date, visit: effective filing date.

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

MPEP 201 - Types of Applications (2)

The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:

  • For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
  • For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.

The MPEP states:

For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.

This change reflects the America Invents Act’s modifications to U.S. patent law.

For more information on America Invents Act, visit: America Invents Act.

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

For more information on oath or declaration, visit: oath or declaration.

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

The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:

  • For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
  • For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.

The MPEP states for post-AIA applications:

37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.

For more information on America Invents Act, visit: America Invents Act.

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

For more information on inventorship, visit: inventorship.

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

MPEP 216 - Entitlement to Priority (1)

How does the AIA affect priority claims for applications filed on or after March 16, 2013?

The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:

“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”

This change means that:

  • The effective filing date can now include foreign priority dates, not just domestic benefit dates.
  • The first-to-file system replaced the first-to-invent system for determining priority.
  • Prior art is now determined based on the effective filing date, including foreign priority dates.

These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.

For more information on America Invents Act, visit: America Invents Act.

For more information on effective filing date, visit: effective filing date.

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

MPEP 300 - Ownership and Assignment (2)

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

The September 16, 2012 date is significant for assignment procedures in applications claiming the benefit of a provisional application. For applications filed on or after this date, the assignment rules are more flexible:

  • If the application includes new subject matter not in the provisional application, new assignment papers are not required if the assignee is the original applicant in the later application.
  • For applications filed before this date, new assignment papers are always required if there’s new subject matter, regardless of who the assignee is.

This change aligns with the implementation of the America Invents Act. As stated in MPEP ยง 306.01: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

To learn more:

MPEP 400 - Representative of Applicant or Owner (7)

The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):

“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”

This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.

To learn more:

The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

This means:

  • For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
  • For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.

This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.

To learn more:

What is the significance of the AIA (America Invents Act) for patent application correspondence?

The America Invents Act (AIA) brought significant changes to patent application correspondence, particularly for applications filed on or after September 16, 2012. Key changes include:

  • New rules for who can file patent applications
  • Changes in correspondence procedures
  • Updated requirements for patent practitioners’ authority

According to MPEP 403.01(a): “The provisions of 37 CFR 1.33(b) for patent applications filed on or after September 16, 2012 differ from the provisions of pre-AIA 37 CFR 1.33(b) for patent applications filed prior to September 16, 2012.” This highlights the importance of understanding the specific rules that apply based on the application’s filing date.

To learn more:

The MPEP 409.03(g) section on proof of irreparable damage is not applicable to patent applications filed on or after September 16, 2012. This change is due to the implementation of the America Invents Act (AIA), which brought significant reforms to the U.S. patent system. Key changes include:

  • Transition from a ‘first-to-invent’ to a ‘first-inventor-to-file’ system
  • New procedures for challenging patents at the USPTO
  • Expanded definition of prior art
  • Changes to inventor oath and declaration requirements

For applications filed on or after September 16, 2012, different rules and procedures apply regarding the representation of applicants and the handling of situations that might have previously fallen under the irreparable damage provisions.

To learn more:

There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:

  • Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
  • Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
  • Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.

It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.

To learn more:

How does the AIA change the process for applications with deceased or incapacitated inventors?

The America Invents Act (AIA) introduced significant changes to the patent application process, including how applications with deceased or legally incapacitated inventors are handled. According to MPEP 409.01(a):

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent.”

Key changes under the AIA include:

  • Allowing assignees or those with sufficient proprietary interest to file applications
  • Introduction of the substitute statement to replace inventor oaths in certain circumstances
  • Simplified process for continuing prosecution when an inventor becomes unavailable
  • Removal of the need for heirs or legal representatives to expressly petition to file on behalf of a deceased inventor

These changes streamline the application process and provide more flexibility when dealing with situations involving deceased or incapacitated inventors, making it easier for the remaining inventors or interested parties to pursue patent protection.

To learn more:

Yes, a pre-AIA 37 CFR 1.47 application can be published as a Statutory Invention Registration, but with a specific condition. According to the MPEP:

“An application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration (provided the request for a Statutory Invention Registration was filed before March 16, 2013).”

It’s important to note that this option is only available for requests filed before March 16, 2013, as the America Invents Act eliminated Statutory Invention Registrations for applications filed on or after that date.

To learn more:

To learn more:

Patent Law (20)

As of September 16, 2012, the rules for who can be an applicant for a patent application were revised. According to MPEP ยง 605, the following individuals or entities can file and prosecute a patent application as the applicant:

  • The inventor
  • A person to whom the inventor has assigned the invention
  • A person to whom the inventor is under an obligation to assign the invention
  • A person who shows sufficient proprietary interest in the matter

The MPEP states: “Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

This change allows for greater flexibility in who can be considered the applicant, potentially streamlining the patent application process for businesses and organizations.

To learn more:

The statement requirement for transition applications was introduced as part of the implementation of the first inventor to file provisions of the America Invents Act (AIA). Transition applications are:

  • Nonprovisional applications filed on or after March 16, 2013
  • Applications that claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013

The statement requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6). As stated in the MPEP:

The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (unless the later-filed application is a nonprovisional international design application).

The statement must be provided within specified time limits. Applicants are not required to provide the statement if they reasonably believe the application does not contain claims with an effective filing date on or after March 16, 2013.

For more information on America Invents Act, visit: America Invents Act.

For more information on first inventor to file, visit: first inventor to file.

For more information on transition applications, visit: transition applications.

The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):

“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”

This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.

To learn more:

The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

This means:

  • For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
  • For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.

This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.

To learn more:

What is the significance of the AIA (America Invents Act) for patent application correspondence?

The America Invents Act (AIA) brought significant changes to patent application correspondence, particularly for applications filed on or after September 16, 2012. Key changes include:

  • New rules for who can file patent applications
  • Changes in correspondence procedures
  • Updated requirements for patent practitioners’ authority

According to MPEP 403.01(a): “The provisions of 37 CFR 1.33(b) for patent applications filed on or after September 16, 2012 differ from the provisions of pre-AIA 37 CFR 1.33(b) for patent applications filed prior to September 16, 2012.” This highlights the importance of understanding the specific rules that apply based on the application’s filing date.

To learn more:

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

The term ‘sufficient proprietary interest’ is introduced in the MPEP ยง 605 for patent applications filed on or after September 16, 2012. The MPEP states:

“Effective September 16, 2012, the Office revised the rules of practice to permit […] a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

‘Sufficient proprietary interest’ typically means that the person or entity has a significant commercial or financial stake in the invention, even if they are not the inventor or assignee. This could include:

  • Licensees with exclusive rights to the invention
  • Investors who have funded the development of the invention
  • Joint venture partners involved in the invention’s creation

To be considered as having ‘sufficient proprietary interest’, the person or entity must typically provide evidence of their interest and may need to submit a petition to the USPTO. The inventor(s) must also provide authorization for this person or entity to act as the applicant.

This provision allows for greater flexibility in who can file and prosecute patent applications, particularly benefiting startups, research institutions, and collaborative innovation projects.

To learn more:

The MPEP 409.03(g) section on proof of irreparable damage is not applicable to patent applications filed on or after September 16, 2012. This change is due to the implementation of the America Invents Act (AIA), which brought significant reforms to the U.S. patent system. Key changes include:

  • Transition from a ‘first-to-invent’ to a ‘first-inventor-to-file’ system
  • New procedures for challenging patents at the USPTO
  • Expanded definition of prior art
  • Changes to inventor oath and declaration requirements

For applications filed on or after September 16, 2012, different rules and procedures apply regarding the representation of applicants and the handling of situations that might have previously fallen under the irreparable damage provisions.

To learn more:

There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:

  • Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
  • Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
  • Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.

It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.

To learn more:

The rules regarding who can be a patent applicant changed significantly for applications filed on or after September 16, 2012. MPEP ยง 605 outlines these differences:

For applications filed on or after September 16, 2012:

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

For applications filed before September 16, 2012:

“For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant.”

The key differences are:

  • Pre-AIA: Only the inventor could be listed as the applicant, even if the application was filed by an assignee.
  • Post-AIA: Assignees, those obligated to assign, or those with sufficient proprietary interest can be listed as the applicant.

For more detailed information, refer to MPEP ยง 605.01 for post-AIA applications and MPEP ยง 605.02 for pre-AIA applications.

To learn more:

The September 16, 2012 date is significant for assignment procedures in applications claiming the benefit of a provisional application. For applications filed on or after this date, the assignment rules are more flexible:

  • If the application includes new subject matter not in the provisional application, new assignment papers are not required if the assignee is the original applicant in the later application.
  • For applications filed before this date, new assignment papers are always required if there’s new subject matter, regardless of who the assignee is.

This change aligns with the implementation of the America Invents Act. As stated in MPEP ยง 306.01: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

To learn more:

The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:

  • For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
  • For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.

The MPEP states:

For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.

This change reflects the America Invents Act’s modifications to U.S. patent law.

For more information on America Invents Act, visit: America Invents Act.

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

For more information on oath or declaration, visit: oath or declaration.

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

The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:

  • For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
  • For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.

The MPEP states for post-AIA applications:

37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.

For more information on America Invents Act, visit: America Invents Act.

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

For more information on inventorship, visit: inventorship.

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

The filing date of a patent application can affect the prosecution rights of assignees. MPEP 106.01 distinguishes between applications filed before and after September 16, 2012:

  • For applications filed before September 16, 2012: See MPEP ยง 324 for information on prosecution by the assignee.
  • For applications filed on or after September 16, 2012: See MPEP ยง 325 for details on prosecution by the assignee.

The MPEP states: “For information pertaining to prosecution by the assignee, see MPEP ยง 324 (for applications filed before September 16, 2012) and MPEP ยง 325 (for applications filed on or after September 16, 2012).”

This distinction is important because the America Invents Act, which went into effect on September 16, 2012, introduced changes to patent law that affected assignee rights and procedures.

For more information on America Invents Act, visit: America Invents Act.

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

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP ยง 325 for applications filed on or after September 16, 2012.

How does the AIA change the process for applications with deceased or incapacitated inventors?

The America Invents Act (AIA) introduced significant changes to the patent application process, including how applications with deceased or legally incapacitated inventors are handled. According to MPEP 409.01(a):

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent.”

Key changes under the AIA include:

  • Allowing assignees or those with sufficient proprietary interest to file applications
  • Introduction of the substitute statement to replace inventor oaths in certain circumstances
  • Simplified process for continuing prosecution when an inventor becomes unavailable
  • Removal of the need for heirs or legal representatives to expressly petition to file on behalf of a deceased inventor

These changes streamline the application process and provide more flexibility when dealing with situations involving deceased or incapacitated inventors, making it easier for the remaining inventors or interested parties to pursue patent protection.

To learn more:

How does the AIA affect priority claims for applications filed on or after March 16, 2013?

The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:

“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”

This change means that:

  • The effective filing date can now include foreign priority dates, not just domestic benefit dates.
  • The first-to-file system replaced the first-to-invent system for determining priority.
  • Prior art is now determined based on the effective filing date, including foreign priority dates.

These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.

For more information on America Invents Act, visit: America Invents Act.

For more information on effective filing date, visit: effective filing date.

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

The America Invents Act (AIA) introduced changes to assignee prosecution rights for patent applications filed on or after September 16, 2012. According to MPEP 106.01:

[F]or applications filed on or after September 16, 2012, [the assignee of record of the entire interest] can prosecute the application after becoming the applicant under 37 CFR 1.46.

This change allows the assignee of the entire interest to become the applicant and prosecute the application directly. For more detailed information:

  • For applications filed before September 16, 2012, refer to MPEP ยง 324
  • For applications filed on or after September 16, 2012, refer to MPEP ยง 325

To learn more:

The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP ยง 605 outlines these changes:

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

Key changes include:

  • Assignees can now be listed as the applicant
  • Persons with sufficient proprietary interest can file on behalf of the inventor
  • The inventor is no longer required to be listed as the applicant

These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.

To learn more:

Yes, a pre-AIA 37 CFR 1.47 application can be published as a Statutory Invention Registration, but with a specific condition. According to the MPEP:

“An application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration (provided the request for a Statutory Invention Registration was filed before March 16, 2013).”

It’s important to note that this option is only available for requests filed before March 16, 2013, as the America Invents Act eliminated Statutory Invention Registrations for applications filed on or after that date.

To learn more:

To learn more:

Patent Procedure (20)

As of September 16, 2012, the rules for who can be an applicant for a patent application were revised. According to MPEP ยง 605, the following individuals or entities can file and prosecute a patent application as the applicant:

  • The inventor
  • A person to whom the inventor has assigned the invention
  • A person to whom the inventor is under an obligation to assign the invention
  • A person who shows sufficient proprietary interest in the matter

The MPEP states: “Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

This change allows for greater flexibility in who can be considered the applicant, potentially streamlining the patent application process for businesses and organizations.

To learn more:

The statement requirement for transition applications was introduced as part of the implementation of the first inventor to file provisions of the America Invents Act (AIA). Transition applications are:

  • Nonprovisional applications filed on or after March 16, 2013
  • Applications that claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013

The statement requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6). As stated in the MPEP:

The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (unless the later-filed application is a nonprovisional international design application).

The statement must be provided within specified time limits. Applicants are not required to provide the statement if they reasonably believe the application does not contain claims with an effective filing date on or after March 16, 2013.

For more information on America Invents Act, visit: America Invents Act.

For more information on first inventor to file, visit: first inventor to file.

For more information on transition applications, visit: transition applications.

The date September 16, 2012, is significant because it marks a change in the applicability of certain patent application procedures. As noted in MPEP 409.03(a):

“[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]”

This date corresponds to the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. For applications filed on or after this date, different rules and procedures apply regarding joint inventorship and the handling of situations where not all inventors are available or willing to sign the application. It’s crucial for applicants to be aware of which set of rules applies to their application based on the filing date.

To learn more:

The date September 16, 2012, is significant in patent applications involving deceased inventors because it marks a change in the applicable regulations. The MPEP section 409.03(c) states:

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

This means:

  • For applications filed before September 16, 2012: The procedures outlined in pre-AIA 37 CFR 1.47 apply when dealing with unavailable legal representatives of deceased inventors.
  • For applications filed on or after September 16, 2012: Different regulations and procedures apply, which are not covered in this specific MPEP section.

This date coincides with the implementation of the America Invents Act (AIA), which brought significant changes to U.S. patent law. Patent applicants and attorneys should be aware of these changes and apply the appropriate procedures based on their application’s filing date.

To learn more:

What is the significance of the AIA (America Invents Act) for patent application correspondence?

The America Invents Act (AIA) brought significant changes to patent application correspondence, particularly for applications filed on or after September 16, 2012. Key changes include:

  • New rules for who can file patent applications
  • Changes in correspondence procedures
  • Updated requirements for patent practitioners’ authority

According to MPEP 403.01(a): “The provisions of 37 CFR 1.33(b) for patent applications filed on or after September 16, 2012 differ from the provisions of pre-AIA 37 CFR 1.33(b) for patent applications filed prior to September 16, 2012.” This highlights the importance of understanding the specific rules that apply based on the application’s filing date.

To learn more:

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

The term ‘sufficient proprietary interest’ is introduced in the MPEP ยง 605 for patent applications filed on or after September 16, 2012. The MPEP states:

“Effective September 16, 2012, the Office revised the rules of practice to permit […] a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

‘Sufficient proprietary interest’ typically means that the person or entity has a significant commercial or financial stake in the invention, even if they are not the inventor or assignee. This could include:

  • Licensees with exclusive rights to the invention
  • Investors who have funded the development of the invention
  • Joint venture partners involved in the invention’s creation

To be considered as having ‘sufficient proprietary interest’, the person or entity must typically provide evidence of their interest and may need to submit a petition to the USPTO. The inventor(s) must also provide authorization for this person or entity to act as the applicant.

This provision allows for greater flexibility in who can file and prosecute patent applications, particularly benefiting startups, research institutions, and collaborative innovation projects.

To learn more:

The MPEP 409.03(g) section on proof of irreparable damage is not applicable to patent applications filed on or after September 16, 2012. This change is due to the implementation of the America Invents Act (AIA), which brought significant reforms to the U.S. patent system. Key changes include:

  • Transition from a ‘first-to-invent’ to a ‘first-inventor-to-file’ system
  • New procedures for challenging patents at the USPTO
  • Expanded definition of prior art
  • Changes to inventor oath and declaration requirements

For applications filed on or after September 16, 2012, different rules and procedures apply regarding the representation of applicants and the handling of situations that might have previously fallen under the irreparable damage provisions.

To learn more:

There are significant differences in power of attorney requirements for patent applications filed before and after September 16, 2012. Key differences include:

  • Signature Requirements: For applications filed on or after September 16, 2012, the power of attorney must be signed by the applicant for patent or the patent owner. For applications filed before September 16, 2012, it must be signed by the applicant for patent or the assignee of the entire interest of the applicant.
  • Definition of Applicant: The definition of ‘applicant’ changed with the America Invents Act. For applications filed on or after September 16, 2012, the applicant can be the inventor(s) or a non-inventor applicant (e.g., an assignee).
  • Forms: Different forms are used for applications filed before and after September 16, 2012. For example, Form PTO/AIA/80 is used for applications filed on or after September 16, 2012, while Form PTO/SB/80 is used for earlier applications.

It’s crucial to use the correct forms and follow the appropriate rules based on the application’s filing date to ensure the power of attorney is properly executed and recognized by the USPTO.

To learn more:

The rules regarding who can be a patent applicant changed significantly for applications filed on or after September 16, 2012. MPEP ยง 605 outlines these differences:

For applications filed on or after September 16, 2012:

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

For applications filed before September 16, 2012:

“For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant.”

The key differences are:

  • Pre-AIA: Only the inventor could be listed as the applicant, even if the application was filed by an assignee.
  • Post-AIA: Assignees, those obligated to assign, or those with sufficient proprietary interest can be listed as the applicant.

For more detailed information, refer to MPEP ยง 605.01 for post-AIA applications and MPEP ยง 605.02 for pre-AIA applications.

To learn more:

The September 16, 2012 date is significant for assignment procedures in applications claiming the benefit of a provisional application. For applications filed on or after this date, the assignment rules are more flexible:

  • If the application includes new subject matter not in the provisional application, new assignment papers are not required if the assignee is the original applicant in the later application.
  • For applications filed before this date, new assignment papers are always required if there’s new subject matter, regardless of who the assignee is.

This change aligns with the implementation of the America Invents Act. As stated in MPEP ยง 306.01: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

To learn more:

The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:

  • For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
  • For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.

The MPEP states:

For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.

This change reflects the America Invents Act’s modifications to U.S. patent law.

For more information on America Invents Act, visit: America Invents Act.

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

For more information on oath or declaration, visit: oath or declaration.

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

The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:

  • For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
  • For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.

The MPEP states for post-AIA applications:

37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.

For more information on America Invents Act, visit: America Invents Act.

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

For more information on inventorship, visit: inventorship.

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

The filing date of a patent application can affect the prosecution rights of assignees. MPEP 106.01 distinguishes between applications filed before and after September 16, 2012:

  • For applications filed before September 16, 2012: See MPEP ยง 324 for information on prosecution by the assignee.
  • For applications filed on or after September 16, 2012: See MPEP ยง 325 for details on prosecution by the assignee.

The MPEP states: “For information pertaining to prosecution by the assignee, see MPEP ยง 324 (for applications filed before September 16, 2012) and MPEP ยง 325 (for applications filed on or after September 16, 2012).”

This distinction is important because the America Invents Act, which went into effect on September 16, 2012, introduced changes to patent law that affected assignee rights and procedures.

For more information on America Invents Act, visit: America Invents Act.

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

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP ยง 325 for applications filed on or after September 16, 2012.

How does the AIA change the process for applications with deceased or incapacitated inventors?

The America Invents Act (AIA) introduced significant changes to the patent application process, including how applications with deceased or legally incapacitated inventors are handled. According to MPEP 409.01(a):

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent.”

Key changes under the AIA include:

  • Allowing assignees or those with sufficient proprietary interest to file applications
  • Introduction of the substitute statement to replace inventor oaths in certain circumstances
  • Simplified process for continuing prosecution when an inventor becomes unavailable
  • Removal of the need for heirs or legal representatives to expressly petition to file on behalf of a deceased inventor

These changes streamline the application process and provide more flexibility when dealing with situations involving deceased or incapacitated inventors, making it easier for the remaining inventors or interested parties to pursue patent protection.

To learn more:

How does the AIA affect priority claims for applications filed on or after March 16, 2013?

The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:

“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”

This change means that:

  • The effective filing date can now include foreign priority dates, not just domestic benefit dates.
  • The first-to-file system replaced the first-to-invent system for determining priority.
  • Prior art is now determined based on the effective filing date, including foreign priority dates.

These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.

For more information on America Invents Act, visit: America Invents Act.

For more information on effective filing date, visit: effective filing date.

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

The America Invents Act (AIA) introduced changes to assignee prosecution rights for patent applications filed on or after September 16, 2012. According to MPEP 106.01:

[F]or applications filed on or after September 16, 2012, [the assignee of record of the entire interest] can prosecute the application after becoming the applicant under 37 CFR 1.46.

This change allows the assignee of the entire interest to become the applicant and prosecute the application directly. For more detailed information:

  • For applications filed before September 16, 2012, refer to MPEP ยง 324
  • For applications filed on or after September 16, 2012, refer to MPEP ยง 325

To learn more:

The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP ยง 605 outlines these changes:

“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”

Key changes include:

  • Assignees can now be listed as the applicant
  • Persons with sufficient proprietary interest can file on behalf of the inventor
  • The inventor is no longer required to be listed as the applicant

These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.

To learn more:

Yes, a pre-AIA 37 CFR 1.47 application can be published as a Statutory Invention Registration, but with a specific condition. According to the MPEP:

“An application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration (provided the request for a Statutory Invention Registration was filed before March 16, 2013).”

It’s important to note that this option is only available for requests filed before March 16, 2013, as the America Invents Act eliminated Statutory Invention Registrations for applications filed on or after that date.

To learn more:

To learn more: