Course Outline
CHAPTER 1: INTRODUCTION
Ch.1/A: The United States Patent System
Ch.1/B: Patents - General Concepts
1. What rights does a patent give?
2. What rights does a patent not give?
3. First to file vs. first to invent
4. Who can file a US patent application?
5. How long does a patent last?
6. What you can patent and what you can't patent
7. How an application becomes a patent ("Patent Prosecution")
8. What are the legal standards required to get a utility patent?
9. Utility patents, design patents and plant patents
10. Provisional and Non-Provisional patent applications
11. The Patent Cooperation Treaty (PCT)
12. Finding the laws and rules (35 USC, 37 CFR & the MPEP)
13. The filing date
14. Structure of a patent file
15. Docketing
16. Invention disclosures
17. Security
CHAPTER 2: FREQUENTLY USED DOCUMENTS AND CONCEPTS
Ch.2/A: Transmittals
Ch.2/B: Sending Correspondence to the USPTO
Ch.2/C: Request for Extension of Time
Ch.2/D: Return Receipt Postcard
Ch.2/E: Claiming Priority
Ch.2/F: Incorporation by Reference
CHAPTER 3: FILING A NON-PROVISIONAL PATENT APPLICATION
Ch.3/A: The Transmittal Sheet
Ch.3/B: Fees
1. Fee Transmittal
2. Calculating Fees and Counting Claims
3. Paying Fees
Ch.3/C: Claims
Ch.3/D: The Specification and Drawings
Ch.3/E: The Oath or Declaration.
Ch.3/F: The Information Disclosure Statement (IDS)
Ch.3/G: The Power of Attorney
Ch.3/H: The Assignment and Assignment Recordation
Ch.3/I: The Small Entity Claim
Ch.3/J: The Return-Receipt Post Card
Ch.3/K: Application Format
Ch.3/L: Drawing Format
Ch.3/M: Finalizing and Mailing the Non-Provisional Application
Ch.3/N: Preliminary Amendment
CHAPTER 4: FILING A PROVISIONAL PATENT APPLICATION
Ch.4/A: The Provisional Application
Ch.4/B: Parts of the Provisional Application
Ch.4/C: Finalizing and Mailing the Provisional Application
Ch.4/D: Converting a Provisional Application
Ch.4/E: Docketing After Filing a New Application
Ch.4/F: Application Data Sheet
CHAPTER 5: PATENT PROSECUTION
Ch.5/A: At the Office of Patent Application Processing (OPAP)
1. Return Receipt Postcard
2. Filing Receipt and Corrected Filing Receipt
3. Notice to File Missing Parts (Filing Date Granted)
4. Notice of Omitted Items (Filing Date Not Granted)
5. Notice of Incomplete Application (Filing Date Not Granted)
6. Other Rarely Encountered Notices
Ch.5/B: Patent Examination
1. First Action Allowance
2. Restriction Requirement
3. Responding to the Restriction Requirement
4. The Office Action
5. Reviewing the Office Action and docketing due dates
6. IDSs in related applications
7. Responding to the Office Action
8. Making amendments
9. Format of the Response to Office Action
10. Proofing and Finalizing the Response to Office Action
11. Mailing the Response
12. Extensions of Time
13. Correcting inventorship
14. Declarations under 37 CFR 1.131 And 1.132
15. What happens after a response to an Office Action is filed?
Ch.5/C: Final Office Action and Advisory Action
1. Response to a Final Office Action and Advisory Action
2. After-final Amendments
3. Docketing After a Final Office Action
4. Finalizing and filing a Response to a Final Office Action
Ch.5/D: Abandonment
Ch.5/E: Revival of an Abandoned Application
Ch.5/F: Petition to Withdraw a Holding of Abandonment
Ch.5/G: Publication
CHAPTER 6: CONTINUATION, DIVISIONAL AND CONTINUATION-IN-PART (CIP), REQUEST FOR CONTINUING APPLICATION (RCE) AND CONTINUED PROSECUTION APPLICATION (CPA)
Ch.6/A: Request For Continued Examination (RCE)
Ch.6/B: Continued Prosecution Application (CPA)
Table: The differences between CPA and RCE Applications
Ch.6/C: Continuations
Ch.6/D: Divisionals
Ch.6/E: Continuation-in-Part (CIP)
Table: Comparison of different types of application
CHAPTER 7: AFTER PROSECUTION
Ch.7/A: Notice of Allowance and Issue Fee
Ch.7/B: Docketing after Payment of Issue Fee
Ch.7/C: Amendments after Notice of Allowance
Ch.7/D: Issue Notification
Ch.7/E: Issue of the Patent
Ch.7/F: Withdrawal from issue
Ch.7/G: Deferring issue of a patent
CHAPTER 8: PATENT TERM ADJUSTMENT AND TERMINAL DISCLAIMERS
Ch.8/A: Patent term adjustment
Ch.8/B: Terminal disclaimers
CHAPTER 9: CERTIFICATES OF CORRECTION AND REISSUE
Ch.9/A: Certificates of Correction
Ch.9/B: Reissue
Ch.9/C: Reexamination
CHAPTER 10: APPEAL
Ch.10/A: Notice of Appeal
Ch.10/B: Appeal Brief
Ch.10/C: Examiner's Answer
Ch.10/D: Reply Brief
Ch.10/E: Supplemental Examiner's Answer
Ch.10/F: At the BPAI
Ch.10/G: Pre-Appeal Brief Conference
CHAPTER 11: MAINTENANCE FEES
CHAPTER 12: ELECTRONIC FILING AND PAIR
Ch.12/A: Electronic Business Center (EBC) & Electronic Filing System (EFS-web)
Ch.12/B: Customer Number and Digital Certificates
Ch.12/C: Image File Wrapper (IFW) & Electronic Filing System (EFS-web)
Ch.12/D: The EFS-Web Process - Electronic filing of applications and other papers
Ch.12/E: Creating pdf Documents For EFS submission
Ch.12/F: Some important user notes
CH.12/G: PAIR (Patent Application Information Retrieval system)
Ch.12/H: Notes on EFS Software use and set-up
CHAPTER 13: ACCELERATED EXAM AND PETITION TO MAKE SPECIAL and DESIGN PATENT APPLICATIONS
Ch.13/A: Accelerated Examination
Ch.13/B: Petition to Make Special (age and health)
Ch.13/C: Design Patent Applications
CHAPTER 14: THE PATENT COOPERATION TREATY (PCT)
Ch.14/A: Introduction
1. Why do we file an International Application under the PCT?
2. What are some of the advantages of filing under the PCT?
3. Overview of the PCT Process
(i) For applications filed on or before December 31, 2003
(ii) For applications filed on or after January 1, 2004
4. Summary of Changes to PCT Procedure as of January 1, 2004
5. PCT Divisionals and Continuations
6. INID (Internationally agreed Numbers for the Identification of Data) Codes
CHAPTER 15: PCT CHAPTER I
Ch.15/A: What happens under Chapter I?
Ch.15/B: Filing the International Application ("the Request")
1. What are the physical requirements of an International Application?
2. What papers do I need to file a Chapter I Request?
3. How do I file a Chapter I Request?
4. A note about date format and country codes
Ch.15/C: How to fill out the Request form
1. Box I. TITLE OF INVENTION
2. Box II. APPLICANT
3. Box III. FURTHER APPLICANT(S) AND/OR FURTHER INVENTORS
4. Box IV. AGENT OR COMMON REPRESENTATIVE
5. Box V. DESIGNATION OF STATES
6. Box VI. THE PRIORITY CLAIM
1. Restoration of Right of Priority (PCT Rule 26bis.3)
2. Correction of a priority claim (PCT Rule 26bis.1)
3. Correction of defects in priority claims (PCT Rule 26bis.2)
4. Incorporation by reference (PCT Rule 20)
5. Missing parts in a PCT application (PCT Rules 20.6 and 20.7)
7. Box VII. INTERNATIONAL SEARCHING AUTHORITY
8. Box VIII. DECLARATIONS
Ch.15/D: Fee Calculation Sheet
1. What if the fees change?
2. What if I don't pay the fees in time?
Ch.15/E: Transmittal
Ch.15/F: How and where do I file the request?
Ch.15/G: What if I miss the PCT filing deadline?
Ch.15/H: Electronic filing using PCT-EASY
CHAPTER 16: DOCUMENTS SENT FROM THE PCT DURING CHAPTER I, AND RESPONSES BY THE APPLICANT
Ch.16/A: Notification of Receipt of Record Copy
Ch.16/B: Notification Concerning Payment of Prescribed Fees
Ch.16/C: Notification of the International Application Number and International Filing Date
Ch.16/D: Invitation to Correct Defects in the International Application
Ch.16/E: Notification of Receipt of Search Copy
Ch.16/F: Notification Concerning Submission or Transmittal of Priority Document
Ch.16/G: Notice Informing the Applicant of the Communication of the International Application
Ch.16/H: Information Concerning Elected Offices Notified of their Election
Ch.16/I: Notification of Transmittal of the International Search Report or the Declaration
Ch.16/J: The International Search Report (ISR)
Ch.16/K: The ISA Written Opinion
Ch.16/L: Responding to the ISR and Written Opinion (Ch. I) - Article 19 Amendments
Ch.16/M: Communication in cases for which no other form is applicable
Ch.16/N: Publication of the International Application
Ch.16/O: What happens next?
CHAPTER 17: PCT CHAPTER II
Ch.17/A: What is Chapter II?
Ch.17/B: Chapter II Demand
Ch.17/C: What documents will I receive after filing the Chapter II Demand?
1. Notification of receipt of the Demand by competent IPEA
2. Notice Advising Elected Offices of the Chapter II Filing
3. Written Opinion (Chapter I) ("Office Action")
3a. Response to the Written Opinion (Chapter I) - Article 34 Amendments
4. International Preliminary Report of Patentability, Chapter I (IPRP Ch. I)
4a. Parts of the International Preliminary Report of Patentability, Chapter I
Ch.17/D: Fraudulent Requests for Payment of Fees
CHAPTER 18: THE NATIONAL PHASE
CHAPTER 19: THE NATIONAL PHASE IN THE US
Ch.19/A: Entry into the National Phase in the US
Ch.19/B: The "By-pass Route" - an alternative to filing under 35 USC 371
CHAPTER 20: THE NATIONAL PHASE IN EUROPE
Ch 20/A: Entry into the national phase in Europe
Ch 20/B: Grant and validation in Europe
