Continuing Applications (continuation/RCE, divisional, CIP)

150 150 tony

Other Subjects

Continuing Applications (continuation/RCE, divisional, CIP)

  1. General requirements
    1. Continuity of disclosure: §112¶1 support in the parent application
    2. Continuity of prosecution: copending with the parent application
    3. Continuity of inventorship: one or more common inventors
    4. Also: must have priority reference
  2. Continuing prosecution: continuation application and request for continued examination (RCE)
    1. Continuation application
    2. RCE: an alternative mechanism of continuation: effective 2000-5-29
      1. Only available for utility and plant applications
      2. Required parts:
        1. Request for RCE
        2. Submission! (e.g., amendment, argument, new evidence, IDS) [reason: final OA is still outstanding, so applicant must parlay by filing a submission]
        3. Fee: must be filed with the request
  3. Divisional
  4. Continuation-in-Part (CIP): may include new matter

Foreign Priority and Provisional Application Priority

  1. Foreign priority
    1. Requirements
      1. Within 12 months from US f/d
      2. Foreign application provides §112¶1 support for US application
      3. US application must refer to foreign application (or defer to later time)
    2. Hilmer doctrine: foreign priority is a “shield” but not a “sword”
    3. Comparison between continuing application and foreign priority
  2. Provisional application: a domestic priority
    1. Overview and attributes
      1. Nonprovisional application filed within 12 months may claim priority to the provisional application
      2. The term of the nonprovisional patent starts from the nonprovisional f/d
      3. Provisional application may not claim an earlier priority.
    2. Provisional application: parts
      1. Required to obtain a f/d
        1. Specification complying with §112¶1
        2. Drawings if necessary
      2. Required to maintain the f/d
        1. Filing fee
        2. Cover sheet including:
          1. Identification as a provisional application
          2. Inventor’s names
        3. Not required: claims, oath or declaration
    3. Comparison between foreign priority and provisional priority
    4. Conversion between provisional and nonprovisional
      1. Converting nonprovisional application to provisional application: maintains f/d
      2. Converting provisional application to nonprovisional application: shortens patent term

New Matter

  1. What does not constitute new matter
    1. Amending specification to conform to claims or drawings
    2. Subject matter previously incorporated by reference
  2. What constitutes new matter
  3. How PTO responds to new matter
    1. New matter in the specification: PTO objects under §132 and requires cancellation.
    2. New matter in any claim: PTO rejects the claim under §112¶1.
    3. New matter in a claim in a reissue application: PTO rejects the claim on two grounds – §112¶1 and §251.
    4. Rejections can be appealed to BPAI; objections can be petitioned to the Director.

Overcoming Rejections with Affidavits (Oath) or Declarations

  1. Overview
    1. Reason, purpose
    2. Types of declarations
      1. Rule 131: to “swear back of” or “antedate” a reference in order to overcome §102(a)(e), but not §102(g)
      2. Rule 132: to overcome rejection or objection on other grounds
      3. Rule 130 declaration: seldom used
  2. Rule 131 declaration
    1. Purpose
    2. Required to show: must provide supporting evidence
    3. R131 declaration cannot be used to overcome
      1. Reference that constitutes statutory bar: §102(b), §102(d)
      2. Reference that is a US patent of another claiming the same invention: proper route is interference proceedings
      3. Reference is the applicant’s prior US patent claiming the same invention or its equivalent: proper route is double patenting proceedings
      4. Reference that is a subject matter admitted by applicant to be prior art: no way to overcome admission
      5. §102(g) [interference]
      6. §102(f) [derivation]
  3. Rule 132 declaration
    1. Purpose: catch-all situations besides Rule 131; most common uses are to
      1. Remove a reference
      2. Refute the rationale underlying a rejection or an objection (such as a §103 or §112 rejection)
    2. How to use Rule 132 declaration
      1. To remove a reference
      2. To rebut a rejection or an objection

Double Patenting (not often on the exam)

  1. Overview
  2. Statutory or “same invention” double patenting: cannot be overcome by terminal disclaimer
  3. Nonstatutory, obviousness-type double patenting: can be overcome by terminal disclaimer
  4. Terminal disclaimer
    1. Applies to all claims
    2. Requires common ownership
    3. Requires the second patent to expire with the first patent, except if the first patent
      1. Expires for failure to pay a maintenance fee
      2. Is held invalid or unenforceable
      3. Is canceled in a reissue or reexamination proceeding
    4. Terminal disclaimer is not an admission that the application claim is obvious over the prior patent claim.

Restriction Requirement and Election of Species (not often on the exam)

  1. Overview
    1. Reason for restriction
    2. Prerequisite for restriction
  2. Two types of inventions to be restricted
    1. Independent and unrelated inventions
    2. Distinct but related inventions
  3. Important procedural points (important)
      1. Applicant must elect and can’t argue with examiner’s restriction requirement.
        1. Applicant must elect a group
        2. Applicant may also traverse the restriction requirement by specifically giving reasons of the examiner’s error, thus preserving further right to petition.
      2. Non-elected claims are withdrawn from prosecution, but still stay in the application until those claims are canceled when the application is ready for issue.
      3. Applicant may petition (but not appeal) a restriction requirement.

Publication of Patent Applications and Pre-Issuance Royalties

  1. Overview
    1. Statute on publication §122
    2. Applications subject to publication
    3. Exceptions to 18-month publication
  2. Request for nonpublication
    1. Requirements for nonpublication: promise not to file abroad
    2. Consequence for applicant breaking his promise and file abroad: timely notify PTO (within 45 days of foreign filing) or risk abandonment.  Merely rescinding the nonpublication request will not satisfy PTO (applicant must notify PTO of the foreign filing).
  3. Public access to published applications
    1. A copy of the entire file wrapper may be obtained by the public upon written request and fee.
    2. But the actual application file is not available to the public (reason: not to disrupt examination).
    3. If the US application contains more than the foreign application, then the US application is redacted.
    4. To reduce third party harassment after application publication:
      1. Third party may not protest or oppose the application
      2. Third party may, within 2 months from application publication, and with a fee, submit to PTO patents and printed publications only, but without any discussion, explanation, highlights, etc.
  4. Other issues

Interference Practice (very rare on the exam)


  1. The importance of naming the true inventor(s)
    1. Who is a true inventor?
      1. The person conceived the claimed inventions
      2. The person who merely reduced the invention to practice is not an inventor
      3. Corporation or the inventor’s assignee is not an inventor
    2. All inventors must sign the oath or declaration of a nonprovisional application.
      1. Joint inventors may sign for an inventor who refuses to sign or who cannot be found
      2. Assignee or other person showing a sufficient proprietary interest may sign if all inventors refuse to sign or cannot be found
      3. A legal representative may sign for a deceased or incapacitated inventor
    3. The oath or declaration of a nonprovisional application must identify: inventive entity, his citizenship and his residence.
      1. Oath always controls inventive entity and citizenship, regardless of the application data sheet (ADS)
      2. If ADS is filed (with or after the oath), then ADS controls the residence information
      3. If oath is filed after ADS, then oath controls everything
  2. Joint inventor: “the 1% claim rule”
  3. Error correction in inventorship
    1. Overview
    2. In a nonprovisional application
      1. Correcting inventorship (add and delete) due to error
      2. Deleting inventors due to claim change
      3. Adding inventors due to claim change
    3. In a provisional application
      1. Adding inventors due to error
      2. Deleting inventors due to error
    4. Correcting inventorship by filing Rule 63 oath or declaration
    5. Correcting inventorship by filing continuing application
    6. Correcting inventorship in an issued patent

Ownership, Assignment, Secrecy and Access

  1. Ownership and joint ownership
    1. Owners
    2. Joint owners
    3. PTO employee may not own a patent until after one year from leaving his employment.
  2. Assignment and license
    1. Definitions
    2. Recording assignment
      1. Recorded assignment of an ancestral application is effective for subsequent divisionals and continuations, but not to CIP.
  3. Secrecy of patent applications
    1. Confidentiality requirements
    2. Exceptions to confidentiality requirements
  4. Access
    1. Permitted access
    2. No access items
    3. Authorization to access unpublished application
  5. Secrecy orders
  6. Petition for license to file abroad
    1. How to obtain
    2. Consequence for violation
    3. Retroactive license

Representing the Inventor or Owner

  1. Qualification
    1. To sign oath or declaration
    2. To prosecute an application
  2. Power of attorney
    1. How to obtain
    2. PTO employees may not
      1. Assist in the prosecution of any application in which he participated as a PTO employee
      2. Assist in the prosecution of any application that was pending under his supervision until after two years from his leaving PTO employment
    3. Revocation of power of attorney
    4. Withdrawal of appointed attorney/agent
      1. Requires approval by Director
      2. Must give reasons
      3. Must be submitted at least 30 days prior to the latest deadline
  3. Practitioner not of record
  4. Dead, incompetent, or incapacitated inventor
  5. PTO mailing hierarchy

Allowance, Issue Maintenance, and Extension

  1. Ex Parte Quayle action
    1. Closes prosecution on merits
    2. Permits correction of formal matters (e.g., abstract, type)
    3. Amendments after Quayle action: treated “similar to” amendments after final OA
  2. Notice of allowance
    1. Formally informs applicant of allowance and issue fee
    2. Amendments after notice of allowance
      1. By examiner
      2. By applicant: requires examiner’s approval
    3. Supplemental oath is not an “amendment”.
  3. Withdrawal from issue
    1. Before payment of issue fee
      1. By examiner
      2. By applicant
    2. After payment of issue fee
      1. By examiner
      2. By applicant (by petition with fee)
  4. Issue fee
    1. 3 months to pay
    2. No extension
    3. If issue fee is not paid within 3 months, then
      1. The application goes abandoned
      2. But may be revived upon showing that the delay is unavoidable or unintentional
    4. Small entity at the time of payment is entitled to fee reduction
    5. Issuance may be deferred for up to one month by petition showing good reason, and fee.
    6. Patent issues to applicant (inventor) unless assignee’s name appears on Fee Transmittal Form.

Design Patents and Plant Patents

  1. Design patents
    1. 14-year term from grant
    2. No maintenance fee
    3. One claim
    4. Purely ornamental = visual look, not functional
    5. Test for patentability: similarity to prior art in overall appearance
    6. Designer of ordinary skill
    7. Not entitled to provisional priority
    8. 6-month foreign priority
  2. Plant patents: asexually producing, non-tuber propagating, cultivated plants
    1. 20-year term from earliest US f/d
    2. No maintenance fee
    3. One claim
    4. Printed publication is not prior art (reason: not enabling)
    5. If color is necessary, file application with two copies of color drawings or color photographs, along with black and white photocopy.

Ethics, Inequitable Conduct, and Fraud in Prosecution: Exam Highlights

  1. Patent agents may not practice outside prosecution.
  2. Billing clients
    1. Contingent fees (such as ownership) are permissible.
    2. Fees advanced must be deposited and may not be invested.
    3. Practitioner may not accept fee from one other than the client without the client’s consent.
  3. Practitioner may not neglect a matter entrusted to him.
    1. Not permitted: stops working for client if client did not pay.
    2. Permitted: withdraws from representation if client did not pay.
  4. Practitioner may not partner with a non-practitioner and use such partnership to practice before PTO.
  5. Practitioner may not take on another client with conflict of interest with the current client, unless the current client gives informed consent.
  6. Practitioner may not limit liability to a client for his malpractice.
  7. Practitioner may refuse his client’s unlawful request.
  8. PTO rule: practitioner must blow the whistle if client refuses to rectify his fraud; reality: practitioner decides on the best option (maybe: withdraw?)
  9. Inter parte reexamination: practitioner may not discuss merits with examiner without the other party’s participation or permission.
  10. Practitioner may not knowingly withhold from PTO controlling legal authority, even if such information is adverse to his client.  The ethical way is to present the information and argue against it.
  11. When PTO asks practitioner if he wishes to stay registered, no reply from the practitioner prompts PTO to presume that the practitioner has either retied or deceased, and remove the practitioner from registry.

Patent Term Duration

  1. Overview of patent terms
    1. Application filed prior to 1995-6-8 (URAA): 17 years from issue
    2. Application pending or patent in force on 1995-6-8: 17 years from issue or 20 years from f/d, whichever is greater.
    3. Application filed between 1995-6-8 and 2000-5-28 (AIPA): 20 years from f/d with up to 5 years extension to make up delays
    4. Application filed on or after2000-5-29: 20 years from f/d with non-capped patent term adjustment (PTA)
  2. Patent term adjustment (PTA = GAB – RRB)
    1. Guaranteed Adjustment Bases (GAB)
    2. Required Reduction Bases (RRB)
    3. PTO’s notice of PTA
  3. Immutable laws of patent term determination under all past and current statutes
    1. Patent term always begins from issue.
    2. Terminal disclaimer always ends patent term.
    3. Failure to pay maintenance fee ends patent term.
    4. Term extension beyond statutory period can be obtained through:
      1. Private congressional extension legislation (very rare), and
      2. Regulatory delay which prevents commercialization during part of regular patent term.
    5. If the term measuring period is 20 years from filing, i.e., under URAA and AIPA:
      1. Ancestral f/d of any continuation, divisional and CIP: starts the 20-year clock
      2. A legitimate but unclaimed priority date: does not start the 20-year clock
      3. Provisional priority date, foreign priority date: does not start the 20-year clock
      4. Design patents: still 14-year term from issue