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Disclaimer - The information provided on this page does not constitue legal advice from Kasha Law LLC and you are advised to seek appropriate legal counsel for any questions you may have or before you take any legal actions.

See our flowchart depicting the Supreme Court's Decision inBilski v. Kappos at Bilski v. Kappos Flowchart

See our flowchart depicting the old machine-or-transformation test at In re Bilski Flowchart

Acting in a representative capacity - M.P.E.P. Section 1.34 - When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.

Affidavit or declaration 1.131 - M.P.E.P. Section 715.02 and 37 C.F.R. 1.131 govern a 1.131 affidavit or declaration.  The 37 CFR 1.131 affidavit or declaration must establish possession of either the whole invention claimed or something falling within the claim (such as a species of a claimed genus), in the sense that the claim as a whole reads on it. In re Tanczyn, 347 F.2d 830, 146 USPQ 298 (CCPA 1965) (Where applicant claims an alloy comprising both nitrogen and molybdenum, an affidavit showing applicant made an alloy comprising nitrogen but not molybdenum is not sufficient under 37 CFR 1.131 to overcome a rejection under 35 U.S.C. 103 based on the combined teachings of one reference disclosing an alloy comprising nitrogen but not molybdenum and a second reference disclosing an alloy comprising molybdenum but not nitrogen). Note, however, where the differences between the claimed invention and the disclosure of the reference(s) are so small as to render the claims obvious over the reference(s), an affidavit or declaration under 37 CFR 1.131 is required to show no more than the reference shows. In re Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971). In other words, where the examiner, in rejecting a claim under 35 U.S.C. 103, has treated a claim limitation as being an obvious feature or modification of the disclosure of the reference(s) relied upon, without citation of a reference which teaches such feature or modification, a 37 CFR 1.131 affidavit or declaration may be sufficient to overcome the rejection even if it does not show such feature or modification.

Amendment After Notice of Allowance - M.P.E.P. Section 714.16 and 37 CFR 1.312 govern amendments after notice of allowance.  After the Notice of Allowance has been mailed, the application is technically no longer under the jurisdiction of the primary examiner. He or she can, however, make examiner's amendments.  If the examiner will not make an amendment, an amendment can be made under 37 CFR 1.312.  37 CFR 1.312(a) governs amendments made before the issue fee is paid and 37 CFR 1.312(b) governs amendments made after the issue fee is paid.  A 37 CFR 1.312(b) amendment must be accompanied by a fee and a petition.

Amendments To Drawings - M.P.E.P. Section 608.02(p) and 37 C.F.R. 1.121(d) govern amendments to drawings. Any changes to an application drawing must be in compliance with § 1.84 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled "Replacement Sheet". Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended.  All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.  (1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Sheet" and must be presented in the amendment or remarks section that explains the change to the drawings. (2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner

Category Claim Limitation in the European Patent Office (EPO) - Under Article 84 in combination with Rule 43(2) EPC, an application may contain more than one independent claim in a particular category only if the subject-matter claimed falls within one or more of the exceptional situations set out in paragraph (a), (b), or (c) of Rule 43(2)EPC.  In other words, two independent method claims or two independent system claims are not normally allowed in one application.

Customer Service Window - Location for private courier deliveries. Address: United States Patent and Trademark Office, Customer Service Window, Randolph Building, 401 Dulaney St., Alexandria, VA 22314. Tips: Most mapping services say Dulaney St, but the USPTO says Dulany St.  The Customer Service Window is on the side of the Randolph Building on Ballenger Ave. between the Randolph and Knox Buildings. Link: USPTO link 

Deposit Account - For the convenience of attorneys, agents and the general public in paying fees for products and services, pre-paid deposit accounts may be established with the U.S. Patent and Trademark Office (USPTO). This eliminates the need to submit a check, credit card, or other payment type each time a fee is required. Further, in an instance of miscalculation of a fee due, the balance required may be charged to the account with authorization, thus preserving the filing date of the application. Deposit Account Info; Deposit Account Login Tip: Remove dash in account number.

Doctrine of Patent Exhaustion - This doctrine provides that a patented item’s initial authorized sale terminates all patent rights to that item.

Duty To Disclose Information  37 C.F.R. 1.56 describes the duty of inventors and attorneys/agents to disclose information material to patentability.  Essentially, there is no duty to submit information which is not material to the patentability of any existing claim.  Materiality is defined as having two parts.  The first part says that information is material if it provides a prima facie case of unpatentability.  A ”prima facie” case of unpatentability is defined as being established when the information compels a conclusion that a claim is unpatentable.  The second part says that information is material if it refutes, or is inconsistent with, a position the applicant takes in arguing before the Patent Office. Therefore, materiality is a rather high hurdle.

However, section (a) of 37 C.F.R. also says that the Office encourages applicants to carefully examine (1) Prior art cited in search reports of a foreign patent office in a counterpart application, and (2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.  Note that this passage says “examine” and not “disclose.”  So, you are encouraged to examine the closest information any pending claim patentably defines.  However, you still do not have a duty to disclose it unless you believe it may be material.  

Some companies make it a practice to file all prior art cited in search reports of foreign patent offices.  This is probably a good idea, because a third party (the foreign patent office) has made a prima facie case of unpatentability in citing the prior art even if you disagree that the prior art is material.  Similarly, some people disclose the closest prior art out of an abundance of caution.  However, there is no duty to disclose the closest prior art unless it is material to a pending claim.  Also, providing non-material prior art can unnecessarily burden the Patent Office.

Perhaps the best way to think about it is to ask yourself the following question.  Under the broadest possible interpretation of the claims in the application, would this reference by itself or in combination with another reference compel someone to conclude that any of the claims were unpatentable?  If the reference would compel someone to make such a conclusion, then it must be disclosed.

Electronic Filing Dates - If an application is completed via EFS-Web, it will receive the filing date of the day it was filed, regardless of whether or not it is a Saturday, Sunday, or national holiday.

Electronic Patent Assignment System (EPAS) - Using EPAS, a Patent Assignment Recordation Coversheet may be created and submitted by completing on-line web forms and attaching the supporting legal documentation as TIFF image(s) or a PDF file for submission via the Internet. USPTO Link
 
Embedding Fonts For EFS-Web The USPTO requires that PDF documents submitted electronically have all fonts embedded.  The following link describes how to embed fonts using Adobe Acrobat. Adobe Link

Ex Parte MashamExaminers often cite this case as standing for the proposition that the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art referenece satisfying the claimed structural limitations.  There are, however, two criteria that must be met in order to apply the ruling of Ex Parte Masham to a claim limitation.  (1) It must be shown that the apparatus and the reference share both the same structural elements and the same utility or purpose, and (2) after making such a showing, there must be a factual determination that the reference is capable of performing the claim limitation.

Negative Limitations In Claim Elements - A negative limitation in a claim element is a limitation that seeks to describe what an apparatus or manufature does not include or what step a process does not perform.  A Negative limitation is allowed by the USPTO as long as it (1) has a basis in the original disclosure and (2) does not render the claim indefinite. MPEP 2173.05(i)  An example of a negative limitation that renders a claim indefinite would be "A is any substance other than B."  In addition to being indefinite, such a limitation can broaden the scope of a claim rather than limiting it.  Steven Hultquist provides a good discussion of negative limitations in The Introduction of Negative Claim Limitations During Ex Parte Prosecution: 35 U.S.C 112 and the Issue of Antecedent Support.  The EPO also allows negative limitations. Guideline 4.20

In Public Use or On Sale in a Foreign Country does NOT Bar Patentability in the United States under 102(b), China under Article 22, or South Korea under section 29 (1) (i)  - As one group has stated, "(i)n certain countries, an invention that is anticipated by knowledge which exists only in non-written form in a foreign country is considered to be novel."  Baechtold et al. J. Intel. Prop. Rights
 
PCT Filing on a Saturday, Sunday, or Holiday - If an expiration date falls on a day in which the national office is not open, the expiration date shall be the next subsequent day. PCT rule 80.5
 
Petition for Revival of an Abandoned Application that is Unavoidable or Unintentional - The Office does not generally question whether there has been an intentional or otherwise impermissible delay in filing an initial petition pursuant to 37 CFR 1.137(a)or (b), when such petition is filed: (A) within 3 months of the date the applicant is first notified that the application is abandoned; and(2) within 1 year of the date of abandonment of the application. Thus, an applicant seeking revival of an abandoned application is advised to file a petition pursuant to 37 CFR 1.137 within 3 months of the first notification that the application is abandoned to avoid the question of intentional delay being raised by the Office (or by third parties seeking to challenge any patent issuing from the application).
 
Maintenance Fees - All utility patents which issue from applications filed on or after December 12, 1980 are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3, 7 and 11 years from the date of the original patent grant.  A surcharge is due if payment is made 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant.  Maintain Your Patent