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
• Ch.1/C: Correspondence with the USPTO
  1. Sending Paper Correspondence to the USPTO
  2. Return Receipt Postcard
  3. Patent Office "Mail Stop" Addresses
  4. Faxing Documents to the USPTO
  5. Next Business Day Rule
  6. Hand Delivered Documents
  7. Change of Correspondence Address

CHAPTER 2: FREQUENTLY USED DOCUMENTS AND CONCEPTS

• Ch.2/A: Transmittals
• Ch.2/B: Request for Extension of Time
• Ch.2/C: Claiming Priority
• Ch.2/D: Incorporation by Reference
• Ch.2/E: Application Data Sheet

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 Nonprovisional Application
• Ch.3/N: Filing the Nonprovisional Application by Mail
• Ch.3/O: Filing the nonprovisional Application using EFS-web
• Ch.3/P: Docketing After Filing a New Nonprovisional Application
• Ch.3/Q: 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: Filing the Provisional Application by Mail
• Ch.4/E: Filing the Provisional Application using EFS-web
• Ch.4/F: Docketing After Filing a New Application
• Ch.4/G: Converting a Provisional Application

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
5. Responding to a Notice of Noncompliant Amendment
• 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

1. When and How to Pay Maintenance Fees
2. What if the Payment of the Maintenance Fee is Delayed?
3. When the Maintenance Fee Address is Different From the Correspondence Address

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: Patent Prosecution Highway (PPH) Program
• Ch.13/D: 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
4. PCT Divisionals and Continuations
5. 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 Do I File a Chapter I Request?
1. Filing the PCT Application Using EFS-web
2. Filing the PCT Application by Mail
• Ch.15/D: Docketing after Filing a New PCT Application
• Ch.15/E: 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/F: Fee Calculation Sheet
1. What if the fees change?
2. What if I don't pay the fees in time?
• Ch.15/G: Transmittal
• Ch.15/H: How and where do I file the request?
• Ch.15/I: What if I miss the PCT filing deadline?
• Ch.15/J: Electronic filing using PCT-SAFE and PCT-EASY
• Ch.15/K: Associating a PCT Application with your Customer Number

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")
1. Response to the Written Opinion (Chapter I) - Article 34 Amendments
4. International Preliminary Report of Patentability, Chapter I (IPRP Ch. I)
   1. Parts of the International Preliminary Report of Patentability, Chapter I
• Ch.17/D: Fraudulent Requests for Payment of Fees

CHAPTER 18: THE NATIONAL PHASE

• Ch.18/A: Four Different Routes of Prosecution

CHAPTER 19: THE NATIONAL PHASE IN THE US

• Ch.19/A: Entry into the National Phase in the US
• Ch.19/B: The "Bypass 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

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