Course Outline
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Ch.1/A: The US 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 Can You Patent and What You Can't 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 / 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: The Fee Transmittal Ch.3/C: The Specification and Drawings Ch.3/D: The Oath Or Declaration. Ch.3/E: Fees Ch.3/F: The Information Disclosure Statement (IDS) and PTO Form 1449 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 Ch.4/E: Docketing After Filing a New Application Ch.4/F: Application Data Sheet
Ch.5/A: The Office Of Initial Patent Examining Procedure (OIPE) 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: RCE, CPA, CONTINUATION, DIVISIONAL AND CONTINUATION-IN-PART APPLICATIONS 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
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.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
Ch.12/A: Image File Wrapper and e-IDS References Ch.12/B: Customer Number Ch.12/C: Electronic Filing System Ch.12/D: Patent Application Information Retrieval (PAIR) and Private PAIR Ch.12/E: Notes on EFS Software Installation and Setup
CHAPTER 13: DESIGN PATENT APPLICATIONS; ACCELERATED EXAMINATION AND PETITION TO MAKE SPECIAL Ch.13/A: Design Patent Applications Ch.13/B: Accelerated Exam and Petition to Make Special
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 01, 2004
4. Summary of Changes to PCT Proceedure as of January 01, 2004
5. PCT Divisionals and Continuations
6. INID (Internationally agreed Numbers for the Identification of Data)s
Ch.15/A: What Happens Under Chapter I?
Ch.15/B: Filing the International Application
("the Request")
Ch.15/C:
How to Fill Out the
Request Form
Ch.15/D: Fee Calculation Sheet
Ch.15/E:
Transmittal
Ch.15/F: How And Where Do I File The Request?
Ch.15/G: 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 to the Designated Offices
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.16K: The Written Opinion (Chapter I)
Ch.16/L: Responding to the ISR and Written Opinion (Chapter 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?
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 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
Amendments
CHAPTER 18: THE NATIONAL PHASE
CHAPTER 19: THE NATIONAL PHASE IN THE U.S.
Ch.19/A: Entry into the National Phase in the US
Ch.19/B: The “By-pass Route” - an alternative to
filing under 35 U.S.C. 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 |
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