M.P.E.P. OVERVIEW

KEY POINTS

MODULE 1 [MPEP 100, 200, 300, 400, 500]

[The author makes no representations as to the reliability of this material. It is being offered only as a guide to assist patent examiners in preparing for the Certification Examination and the Proficiency Test.]

Prepared by: Jacques Louis-Jacques TC 2100

Updated: March 2007

KEY POINTS TO REMEMBER (MPEP 100-500)

Confidentiality of Patent Applications (35 U.S.C. 122(a), 37 CFR 1.14 and MPEP 101- 110) Patent applications that have not been published under 35 U.S.C. 122(b) are generally

preserved in confidence. See MPEP 101. All reissue applications, all applications in which the Office has accepted a request to open the

complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon payment of a fee. See MPEP 103.

The assignee of record of the entire interest in an application may intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice. See 37 CFR 3.71. Such intervention, however, does not exclude the applicant from access to the application to see that it is being prosecuted properly, unless the assignee makes specific request to that effect. See MPEP 106.

While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant, an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application. See MPEP 106.01, MPEP 402.10, 37 CFR 1.47.

Types and Status of Applications [MPEP 201, 203, 35 U.S.C. 111] An application can be filed either by a sole inventor or by joint inventors. See MPEP 201.01.

An application by a sole inventor is an application wherein the invention is presented as that of a single person. See MPEP 201.01.

An application by joint inventors is one in which the invention is presented as that of two or more persons. See MPEP 201.02.

Correction of inventorship (35 U.S.C. 116, 37 CFR 1.48, MPEP 201.03) Correction of inventorship in an application is permitted by amendment under 35 U.S.C. 116, which is implemented by 37 CFR 1.48. Corrections of inventorship are requested under 37 CFR 1.48. Requests under 37 CFR 1.48 are usually decided by the Primary Examiner, except where:

the application is involved in an interference (decided by the Board of Patent Appeals and Interferences);

the application is a national stage application filed under 35 U.S.C. 371 which, as of the date of filing of the request, has not been accepted as satisfying the requirements for entry into the national stage (decided in the PCT Legal Office);

the request is accompanied by a petition under 37 CFR 1.183 (decided in the Office of Petitions).

Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR 1.53 without the need for filing a request under 37 CFR 1.48, either in the application containing the inventorship error (to be abandoned) or in the continuing application. The continuing application must be filed with the correct inventorship named therein.

37 CFR 1.48 does not apply to reissue applications. 37 CFR 1.48 will generally correct the inventorship in the application in which it is filed.

CFR 1.48(a): where the inventorship was improperly set forth in the executed oath or declaration filed in the application.

37 CFR 1.48(b): where the executed oath or declaration had correctly set forth the inventorship but due to prosecution of the application, e.g., claim cancellation or

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amendment, fewer than all of the currently named inventors are the actual inventors of the remaining claims.

37 CFR 1.48(c): where the executed oath or declaration had correctly set forth the inventorship but due to amendment of the claims to include previously unclaimed but disclosed subject matter, one or more inventors of the amended subject matter must be added to the current inventorship.

37 CFR 1.48(d): is directed at provisional applications where an inventor is to be added. 37 CFR 1.48(e) is directed at provisional applications where an inventor is to be deleted. 37 CFR 1.48(f) operates to automatically correct the inventorship upon filing of a first

executed oath or declaration under 37 CFR 1.63 by any of the inventors in a nonprovisional application or upon filing of a cover sheet in a provisional application.

To correct the inventorship under 37 CFR 1.48, an oath or declaration under 37 CFR 1.63 by each actual inventor must be presented.

The written consent of every existing assignee of the original named inventors must also be submitted.

A request under 37 CFR 1.48 will NOT be required: (A) where an application is to issue with the correct inventorship based on the allowed

claims even though the application may have been filed with an incorrect inventorship based on the claims as originally submitted;

(B) where a typographical or transliteration error in the spelling of an inventors name was discovered;

(C) where an inventors name has been changed after the application has been filed; (D) where a court has issued an order under 35 U.S.C. 256 for correction of the

inventorship of a patent; (E) where there is no change of individual but an incorrect name was given; (F) where the first-filed executed oath/declaration (in a nonprovisional application) was

filed on or after December 1, 1997 and names the correct inventors but the inventive entity on the executed oath/declaration differs from that which was set forth on filing of the application;

(G) where the cover sheet (in a provisional application) was filed on or after December 1, 1997 and names the correct inventors but the inventive entity on the cover sheet differs from that which was set forth on the filing of the provisional application without a cover sheet.

Provisional applications (35 U.S.C. 111(b), 37 CFR 1.51(c) and 1.53(c), MPEP 201.04(b)) To be complete, must include

Specification (35 U.S.C. 112, 1st paragraph) Description (37 CFR 1.71)

Cover sheet/Application Data Sheet (ADS) Drawings (35 U.S.C. 113), when necessary Filing fee and application size fee

A provisional application does NOT have to be complete in order to receive a filing date. A filing date is granted when the following items are filed in the Office (37 CFR 1.53(c)):

Specification as prescribed by 35 U.S.C. 112, 1st paragraph Drawing(s), if necessary

The cover sheet and the prescribed fees are NOT required to obtain a filing date. (37 CFR 1.53(c))

If the provisional application has been granted a filing date, but does not include the cover sheet or the basic filing fee, applicant will be notified and given a period of time within which to submit these items and pay the surcharge to avoid abandonment. See 37 CFR 1.53(g).

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The cover sheet required by 37 CFR 1.51(c)(1), may be an application data sheet (37 CFR 1.76), or a cover letter identifying the application as a provisional application.

A claim is NOT required in a provisional application. An oath /declaration is NOT required for a provisional application. Provisional applications are NOT examined on their merits. The provisional application shall be regarded as abandoned 12 months after the filing date,

(35 U.S.C. 111(b)(5)). A provisional application shall not be entitled to the right of priority of any other application,

U.S. or foreign. 35 U.S.C. 111(b)(7). No information disclosure statement may be filed in a provisional application.

Continuing Applications (35 U.S.C. 120, 35 U.S.C. 119(e), 37 CFR 1.78, MPEP 201.06(c) and

201.11) Divisional Application - A later application for an independent or distinct invention, carved

out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or division. See MPEP 201.06.

Continuation Application - A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented. See MPEP 201.07.

The applicant in the continuation application must include at least one inventor named in the prior nonprovisional application. See MPEP 201.07.

The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application. See MPEP 201.07.

A continuation application may be filed (MPEP 201.07): by providing a copy of the prior application, including a copy of the signed declaration

in the prior application, as filed. See 37 CFR 1.63(d). by providing a new specification and drawings and a newly executed declaration

provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.

No newly executed oath/declaration is required if filed by all or fewer than all of the inventors in parent application.

Continuation-In-Part (CIP) Application - A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application. See MPEP 201.08.

The subject matter added in the later application will not be entitled to the filing date of the earlier application. See MPEP 201.08.

Two sets of claims in a CIP may have different effective filing dates depending on whether new subject matter has been added. See MPEP 201.08.

Claims directed to subject matter disclosed in earlier application will be entitled to the filing of the earlier patent application. See MPEP 201.08.

Claims directed to subject matted added in the later (CIP) application will be entitled to the filing date of the CIP. See MPEP 201.08.

Conditions for benefits under 35 U.S.C. 120 and 37 CFR 1.78(a)(1) (a)(3) are (MPEP 201.11): (A) the prior-filed application must disclose the claimed invention of the later-filed

application in the manner provided by 35 U.S.C. 112, 1st paragraph; (B) the later-filed application must be copending with the prior-filed application;

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(C) the later-filed application must contain a reference to the prior-filed application in the first sentence(s) of the specification or in an ADS;

(D) the later-filed application must be filed by an inventor or inventors named in the prior-filed application;

(E) if the later-filed application is a utility or plant application filed on or after November 29, 2000, the reference to the prior-filed application must be submitted within the time period set forth in 37 CFR 1.78(a);

(F) if the prior-filed application was filed under 35 U.S.C. 111, the prior-filed application must be entitled to a filing date and the basic filing fee of the prior-filed application must have been paid.

Conditions for benefits under 35 U.S.C. 119(e) and 37 CFR 1.78(a)(4) (a)(6) are (MPEP 201.11): (A) the prior-filed provisional application must disclose the claimed invention of the

later-filed application in the manner provided by 35 U.S.C. 112, 1st paragraph; (B) the later-filed application must be filed not later than 12 months after the filing date of

the prior provisional application; (C) the later-filed application must contain a reference to the prior-filed provisional

application in the first sentence(s) of the specification or in an ADS; (D) the later-filed application must be filed by an inventor or inventors named in the

prior-filed provisional application; (E) if the later-filed application is a utility or plant application filed on or after November

29, 2000, the reference to the prior-filed provisional application must be submitted within the time period set forth in 37 CFR 1.78(a);

(F) if the prior-filed provisional application was filed in a language other than English, an English translation of the provisional application and a statement that the translation is accurate must be filed in the provisional application;

(G) if the prior-filed application was filed under 35 U.S.C. 111, the prior-filed application must be entitled to a filing date and the basic filing fee of the prior-filed application must have been paid.

Right of Foreign Priority (35 U.S.C. 119(a) (d), 37 CFR 1.55 and MPEP 201.13) Under certain conditions and on fulfilling certain requirements, an application for patent

filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country, to overcome an intervening reference or for similar purposes (35 U.S.C. 119(a)-(d) and (f), and 37 CFR 1.55). See MPEP 201.13.

The conditions, for benefit of the filing date of a prior application filed in a foreign country, may be listed as follows: (See MPEP 201.13) (A)The foreign application must be one filed in a foreign country which affords similar

privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country.

(B)The foreign application must have been filed by the same applicant (inventor) as the applicant in the United States, or by his or her legal representatives or assigns.

(C)The application, or its earliest parent United States application under 35 U.S.C. 120, must have been filed within 12 months from the date of the earliest foreign filing in a recognized country as explained below.

(D)The foreign application must be for the same invention as the application in the United States.

(E)For an original application filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

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(F)For applications that entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT Article and Regulations.

(G)In the case where the basis of the claim is an application for an inventor's certificate, the requirements of 37 CF R 1.55(b) must also be met.

If at the time of making an action the examiner has found an intervening reference (with an effective date between the date of the foreign filing and the date of filing in the United States), he or she simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the papers have not yet been filed). See MPEP 201.15.

If the applicant argues the reference, the examiner, in the next action in the application, may specifically require the foreign papers to be filed in addition to repeating the rejection if it is still considered applicable, or he or she may merely continue the rejection. See MPEP 201.15.

For conditions and requirements for incorporation by reference pursuant to 37 CFR 1.57(a) ,

see MPEP 201.17. Ownership and Assignment of Applications (37 CFR, Part 3 and MPEP Chapter 300) Ownership of a patent gives the patent owner the right to exclude others from making, using,

offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). See MPEP 301.

Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same. See MPEP 301.

Individual ownership - An individual entity may own the entire right, title and interest of the patent property. See MPEP 301.

Individual ownership occurs where there is only one inventor, and the inventor has not assigned the patent property. See MPEP 301.

Individual ownership occurs where all parties having ownership interest (all inventors and assignees) assign the patent property to one party. See MPEP 301.

Joint ownership - Multiple parties may together own the entire right, title and interest of the patent property. See MPEP 301.

Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. See MPEP 301.

In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the divisional or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications. See MPEP 306.

Although the assignment recorded against an original application is applied to the divisional or continuation application, the Offices assignment records will only reflect an assignment of a divisional or continuation application if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee, is filed. See MPEP 306.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. See MPEP 306.

If an application which claims the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later

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application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120. See MPEP 306, 306.01.

For right of owner or assignee to take action in a patent application, see MPEP 324. Representative of Inventor or Owner (MPEP Chapter 400) Interviews with a registered attorney or agent not of record will, in view of 35 U.S.C. 122, be

conducted only on the basis of information and files supplied by the attorney or agent. See MPEP 402.

The Office no longer accepts a power of attorney signed by a principal to name an associate power of attorney. See MPEP 402.02.

An appointment of an associate power of attorney filed on or after June 25, 2004 will not be accepted. See MPEP 402.02, 406.

Revocation of the power of the principal attorney revokes any associate powers granted by him or her to other attorneys. See MPEP 402.05.

The assignee of record of the entire interest can revoke the power of attorney of the applicant unless an irrevocable right to prosecute the application had been given as in some government owned applications. See MPEP 402.07.

A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in 37 CFR 3.73(b). See MPEP 402.07, MPEP 324.

If the inventor is dead, insane, or otherwise legally incapacitated, refuses to execute an application, or cannot be found, an application may be made by someone other than the inventor, See MPEP 403, MPEP 409.01 - 409.03(j), 37 CFR 1.42, 1.43 and 1.47, and 37 CFR 1.423.

A minor (under age 18) inventor may execute an oath or declaration under 37 CFR 1.63 as long as the minor is competent to sign (i.e., understands the document that he or she is signing); a legal representative is not required to execute an oath or declaration on the minors behalf. See MPEP 409, 37 CFR 1.63(a)(1).

If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, the fee set forth in 37 CFR 1.17(g), and the last known address of the nonsigning inventor. The nonsigning inventor may subsequently join in the application by filing an oath or declaration complying with 37 CFR 1.63. See 35 U.S.C. 116, 35 U.S.C. 118, 37 CFR 1.47 and MPEP 409.03.

Filing under 37 CFR 1.47(b) and 35 U.S.C. 118 is permitted only when no inventor is available to make application. See MPEP 409.03(b).

Where 37 CFR 1.47(a) is available, application cannot be made under 37 CFR 1.47(b). See MPEP 409.03(b).

The fact that a nonsigning inventor is on vacation or out of town and is therefore temporarily unavailable to sign the declaration is not an acceptable reason for filing a petition under 37 CFR 1.47. See MPEP 409.03(d).

The fact that an inventor is hospitalized and/or is not conscious is not an acceptable reason for filing under 37 CFR 1.47. 37 CFR 1.43 may be available under these circumstances. See MPEP 409.03(d), MPEP 409.02.

The nonsigning inventor is entitled to inspect any paper in the application, order copies thereof at the price set forth in 37 CFR 1.19, and make his or her position of record in the file wrapper of the application. See MPEP 409.03(i).

A nonsigning inventor is not entitled to a hearing, and is not entitled to prosecute the application if status under 37 CFR 1.47 has been accorded, or if proprietary interest of the 37

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CFR 1.47(b) applicant has been shown to the satisfaction of the U.S. Patent and Trademark Office. See MPEP 409.03(i).

A nonsigning inventor may join in a 37 CFR 1.47 application. See MPEP 409.03(i). Receipt and Handling of Mail and Papers (MPEP Chapter 500) Correspondence Signature Requirements [MPEP 502.02] Correspondence filed in the Office, which requires a persons signature, may be filed with

one of three types of signatures: handwritten signature; S-signature; and Office Electronic Filing System (EFS) character coded signature. See MPEP 502.02, 37

CFR 1.4(d). Handwritten Signature - A persons handwritten signature may be an original, or a copy

thereof. See MPEP 502.02, 37 CFR 1.4(d)(1). S-signature - An S-signature is a signature inserted between forward slash marks. See

MPEP 502.02, 37 CFR 1.4(d)(2). An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate

spaces and punctuation (i.e., commas, periods, apostrophes, or hyphens). See MPEP 502.02. EFS signature - an electronic signature, for correspondence submitted via EFS in character

coded form for a patent application, e-IDS or an assignment cover sheet signed consistent with 37 CFR 3.31. See MPEP 502.02, 37 CFR 1.4(d)(3).

Correspondence: Mailing and Facsimile (Fax) (37 CFR 1.6, MPEP 502 and 502.01) Applicants may submit documents in person, by mail (e.g., postal service) or by fax.

However, not all documents may be submitted by fax, and if submitted by fax will not be granted a date of receipt. See 37 CFR 1.6(d).

Papers not permitted to be transmitted by fax include: New applications, any papers needed to obtain a filing date Papers requiring original signatures Request for reexamination Papers for interference proceedings Color drawings Correspondence to be filed in an application subject to a secrecy order

An International Application (PCT) cannot be filed by fax. A RCE/CPA can be filed by fax. Date accorded to papers filed by fax is the date when transmission is completed. For filing of correspondence by Express Mail see 37 CFR 1.10 and MPEP 513. Certificate of mailing and Certificate of transmission (37 CFR 1.8 and MPEP 512) Certificate of mailing does NOT apply to papers mailed in a foreign country. Certification of transmission (fax) applies to papers transmitted from a foreign country.

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KEY POINTSMODULE 1

Prepared by: Jacques Louis-Jacques