Patent Law FAQ

The Manual of Patent Examining Procedure (MPEP) is regularly updated to reflect changes in patent laws, rules, and procedures. According to MPEP 101:

The Manual is updated periodically to include changes in patent laws and rules and also changes in Patent and Trademark Office procedures.

While the MPEP doesn’t specify an exact frequency for updates, they typically occur:

• Multiple times per year to incorporate new policies and procedures
• After significant changes in patent laws or regulations
• When court decisions impact patent examination practices

Users should always refer to the most recent version of the MPEP available on the USPTO website for the most up-to-date information.

For more information on MPEP updates, visit: MPEP updates.

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

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

Access to unpublished abandoned patent applications is limited. According to 37 CFR 1.14(a)(1)(iv), the file contents of an unpublished abandoned application may be made available to the public if:

• The application is identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.
• Benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has been published or patented.

To obtain access, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b).

Access to pending unpublished patent applications is generally restricted. However, according to 37 CFR 1.14(a)(1)(v) and (vi), there are some circumstances where a copy of the file contents or the application as originally filed may be provided:

• If the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has been published or patented.
• If the application is incorporated by reference or otherwise identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.

In these cases, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b). The Office will not provide access to the paper file of a pending application, except under specific circumstances outlined in 37 CFR 1.14(c) or (i).

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

The MPEP states: “For information pertaining to prosecution by the assignee, see MPEP § 324 (for applications filed before September 16, 2012) and MPEP § 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 Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several important changes to US patent law, particularly regarding priority claims and international applications. Key changes include:

• Restoration of the right of priority to a foreign application or the benefit of a provisional application in certain cases
• Ability to file international design applications
• Ability to claim priority to, and benefit of, international design applications in nonprovisional applications

The MPEP states: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes included the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.”

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

USPTO employees are subject to several restrictions regarding patents:

• They cannot apply for a patent during their employment and for one year after.
• They cannot acquire any patent or interest in a patent, directly or indirectly, except through inheritance or bequest, during employment and for one year after.
• For patents applied for after the one-year period, they cannot claim a priority date earlier than one year after their employment ends.

These restrictions are outlined in 35 U.S.C. 4, which states:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’

The enforceability of patent arbitration awards is contingent upon proper notice being filed with the USPTO. According to 35 U.S.C. 294(e) and 37 CFR 1.335(c):

‘The award shall be unenforceable until the notice required by subsection (d) is received by the Director.’

This means that until the proper notice of the arbitration award is filed with the USPTO, the award cannot be enforced. It’s crucial for parties involved in patent arbitration to ensure that all required notices are filed promptly to maintain the enforceability of the award.

USPTO employees are subject to several restrictions regarding patents:

• They cannot apply for a patent during their employment and for one year after.
• They cannot acquire any patent or interest in a patent, directly or indirectly, except through inheritance or bequest, during employment and for one year after.
• For patents applied for after the one-year period, they cannot claim a priority date earlier than one year after their employment ends.

These restrictions are outlined in 35 U.S.C. 4, which states:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’

The enforceability of patent arbitration awards is contingent upon proper notice being filed with the USPTO. According to 35 U.S.C. 294(e) and 37 CFR 1.335(c):

‘The award shall be unenforceable until the notice required by subsection (d) is received by the Director.’

This means that until the proper notice of the arbitration award is filed with the USPTO, the award cannot be enforced. It’s crucial for parties involved in patent arbitration to ensure that all required notices are filed promptly to maintain the enforceability of the award.

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:

• AIA
• America Invents Act
• patent application correspondence
• USPTO rules
• patent law changes

While both suspended and excluded patent practitioners are prohibited from practicing before the USPTO, there are differences in the nature and duration of the prohibition:

• Suspended practitioner: Temporarily prohibited from practicing before the USPTO for a specific period.
• Excluded practitioner: Permanently prohibited from practicing before the USPTO, unless later reinstated.

The MPEP § 407 uses both terms, indicating that the Office treats them similarly in terms of communication and representation: ‘The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.’

While both suspended and excluded patent practitioners are prohibited from practicing before the USPTO, there are differences in the nature and duration of the prohibition:

• Suspended practitioner: Temporarily prohibited from practicing before the USPTO for a specific period.
• Excluded practitioner: Permanently prohibited from practicing before the USPTO, unless later reinstated.

The MPEP § 407 uses both terms, indicating that the Office treats them similarly in terms of communication and representation: ‘The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.’

USPTO employees are subject to several restrictions regarding patents:

• They cannot apply for a patent during their employment and for one year after.
• They cannot acquire any patent or interest in a patent, directly or indirectly, except through inheritance or bequest, during employment and for one year after.
• For patents applied for after the one-year period, they cannot claim a priority date earlier than one year after their employment ends.

These restrictions are outlined in 35 U.S.C. 4, which states:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’

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:

• AIA
• America Invents Act
• patent application correspondence
• USPTO rules
• patent law changes

While both suspended and excluded patent practitioners are prohibited from practicing before the USPTO, there are differences in the nature and duration of the prohibition:

• Suspended practitioner: Temporarily prohibited from practicing before the USPTO for a specific period.
• Excluded practitioner: Permanently prohibited from practicing before the USPTO, unless later reinstated.

The MPEP § 407 uses both terms, indicating that the Office treats them similarly in terms of communication and representation: ‘The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.’

The Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several important changes to US patent law, particularly regarding priority claims and international applications. Key changes include:

• Restoration of the right of priority to a foreign application or the benefit of a provisional application in certain cases
• Ability to file international design applications
• Ability to claim priority to, and benefit of, international design applications in nonprovisional applications

The MPEP states: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes included the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.”

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

The rules regarding who can be a patent applicant changed significantly for applications filed on or after September 16, 2012. MPEP § 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 § 605.01 for post-AIA applications and MPEP § 605.02 for pre-AIA applications.

To learn more:

• patent applicant rules
• pre-AIA
• post-AIA
• patent law changes
• America Invents Act

The Manual of Patent Examining Procedure (MPEP) is regularly updated to reflect changes in patent laws, rules, and procedures. According to MPEP 101:

The Manual is updated periodically to include changes in patent laws and rules and also changes in Patent and Trademark Office procedures.

While the MPEP doesn’t specify an exact frequency for updates, they typically occur:

• Multiple times per year to incorporate new policies and procedures
• After significant changes in patent laws or regulations
• When court decisions impact patent examination practices

Users should always refer to the most recent version of the MPEP available on the USPTO website for the most up-to-date information.

For more information on MPEP updates, visit: MPEP updates.

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

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

The enforceability of patent arbitration awards is contingent upon proper notice being filed with the USPTO. According to 35 U.S.C. 294(e) and 37 CFR 1.335(c):

‘The award shall be unenforceable until the notice required by subsection (d) is received by the Director.’

This means that until the proper notice of the arbitration award is filed with the USPTO, the award cannot be enforced. It’s crucial for parties involved in patent arbitration to ensure that all required notices are filed promptly to maintain the enforceability of the award.

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

The MPEP states: “For information pertaining to prosecution by the assignee, see MPEP § 324 (for applications filed before September 16, 2012) and MPEP § 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.

How does the AIA change joint inventorship requirements?

The America Invents Act (AIA) introduced significant changes to joint inventorship requirements:

• Elimination of ‘without deceptive intention’: The AIA removed the requirement that joint inventors make their respective contributions ‘without deceptive intention.’ This simplifies the inventorship determination process.
• Broader inventorship criteria: The AIA expanded the definition of joint inventorship, allowing for more flexibility in determining who qualifies as a joint inventor.
• Changes to oath or declaration: The AIA modified the requirements for inventor’s oath or declaration, impacting how joint inventors are identified and verified in patent applications.

As stated in MPEP 602.09: ‘The AIA eliminated the requirement that each joint inventor make their contribution jointly with the other joint inventors.’

To learn more:

• AIA
• Joint Inventorship
• Patent Law Changes

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

• AIA
• America Invents Act
• patent applicant
• patent law changes
• patent reform

Access to unpublished abandoned patent applications is limited. According to 37 CFR 1.14(a)(1)(iv), the file contents of an unpublished abandoned application may be made available to the public if:

• The application is identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.
• Benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has been published or patented.

To obtain access, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b).

Access to pending unpublished patent applications is generally restricted. However, according to 37 CFR 1.14(a)(1)(v) and (vi), there are some circumstances where a copy of the file contents or the application as originally filed may be provided:

• If the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has been published or patented.
• If the application is incorporated by reference or otherwise identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.

In these cases, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b). The Office will not provide access to the paper file of a pending application, except under specific circumstances outlined in 37 CFR 1.14(c) or (i).

USPTO employees are subject to several restrictions regarding patents:

• They cannot apply for a patent during their employment and for one year after.
• They cannot acquire any patent or interest in a patent, directly or indirectly, except through inheritance or bequest, during employment and for one year after.
• For patents applied for after the one-year period, they cannot claim a priority date earlier than one year after their employment ends.

These restrictions are outlined in 35 U.S.C. 4, which states:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’

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:

• AIA
• America Invents Act
• patent application correspondence
• USPTO rules
• patent law changes

While both suspended and excluded patent practitioners are prohibited from practicing before the USPTO, there are differences in the nature and duration of the prohibition:

• Suspended practitioner: Temporarily prohibited from practicing before the USPTO for a specific period.
• Excluded practitioner: Permanently prohibited from practicing before the USPTO, unless later reinstated.

The MPEP § 407 uses both terms, indicating that the Office treats them similarly in terms of communication and representation: ‘The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.’

The Patent Law Treaties Implementation Act (PLTIA) of 2012 introduced several important changes to US patent law, particularly regarding priority claims and international applications. Key changes include:

• Restoration of the right of priority to a foreign application or the benefit of a provisional application in certain cases
• Ability to file international design applications
• Ability to claim priority to, and benefit of, international design applications in nonprovisional applications

The MPEP states: “Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes included the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.”

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

The rules regarding who can be a patent applicant changed significantly for applications filed on or after September 16, 2012. MPEP § 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 § 605.01 for post-AIA applications and MPEP § 605.02 for pre-AIA applications.

To learn more:

• patent applicant rules
• pre-AIA
• post-AIA
• patent law changes
• America Invents Act

The Manual of Patent Examining Procedure (MPEP) is regularly updated to reflect changes in patent laws, rules, and procedures. According to MPEP 101:

The Manual is updated periodically to include changes in patent laws and rules and also changes in Patent and Trademark Office procedures.

While the MPEP doesn’t specify an exact frequency for updates, they typically occur:

• Multiple times per year to incorporate new policies and procedures
• After significant changes in patent laws or regulations
• When court decisions impact patent examination practices

Users should always refer to the most recent version of the MPEP available on the USPTO website for the most up-to-date information.

For more information on MPEP updates, visit: MPEP updates.

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

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

The enforceability of patent arbitration awards is contingent upon proper notice being filed with the USPTO. According to 35 U.S.C. 294(e) and 37 CFR 1.335(c):

‘The award shall be unenforceable until the notice required by subsection (d) is received by the Director.’

This means that until the proper notice of the arbitration award is filed with the USPTO, the award cannot be enforced. It’s crucial for parties involved in patent arbitration to ensure that all required notices are filed promptly to maintain the enforceability of the award.

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

The MPEP states: “For information pertaining to prosecution by the assignee, see MPEP § 324 (for applications filed before September 16, 2012) and MPEP § 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.

How does the AIA change joint inventorship requirements?

The America Invents Act (AIA) introduced significant changes to joint inventorship requirements:

• Elimination of ‘without deceptive intention’: The AIA removed the requirement that joint inventors make their respective contributions ‘without deceptive intention.’ This simplifies the inventorship determination process.
• Broader inventorship criteria: The AIA expanded the definition of joint inventorship, allowing for more flexibility in determining who qualifies as a joint inventor.
• Changes to oath or declaration: The AIA modified the requirements for inventor’s oath or declaration, impacting how joint inventors are identified and verified in patent applications.

As stated in MPEP 602.09: ‘The AIA eliminated the requirement that each joint inventor make their contribution jointly with the other joint inventors.’

To learn more:

• AIA
• Joint Inventorship
• Patent Law Changes

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

• AIA
• America Invents Act
• patent applicant
• patent law changes
• patent reform

Access to unpublished abandoned patent applications is limited. According to 37 CFR 1.14(a)(1)(iv), the file contents of an unpublished abandoned application may be made available to the public if:

• The application is identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.
• Benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has been published or patented.

To obtain access, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b).

Access to pending unpublished patent applications is generally restricted. However, according to 37 CFR 1.14(a)(1)(v) and (vi), there are some circumstances where a copy of the file contents or the application as originally filed may be provided:

• If the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has been published or patented.
• If the application is incorporated by reference or otherwise identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.

In these cases, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b). The Office will not provide access to the paper file of a pending application, except under specific circumstances outlined in 37 CFR 1.14(c) or (i).