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Regular “utility”application
Provisional
RestrictionRequirement
2m +4m
EP priority
FinalOffice Action
3m +3m
Non-finalOffice Action(s)
3m +3m
NOA Issued patent
AdvisoryAction
AbandonedAllowance
RCEAppeal
PCT application
371national entry
Continuation“bypass”
Certificate of CorrectionReissue(Broadening) ReissueEx parte ReexaminationSupplemental re-examinationPost-grant reviewInter parte review
Maze of formalities
• MPEP not always up to date
• AIA (Leahy–Smith America Invents Act 2011)
• AIA Technical Corrections Act- January 2013
• Patent Law Treaty (PLT) and Patent Law Treaties Implementation Act (PLTIA) (December 18, 2013)
Changes to USC (“articles”) and CFR (“rules”)
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• Patent term adjustment can extend 20y patent term
• Delays by the USPTO
• Applicant delays can shorten PTA
• USPTO indicates calculation in PAIR (request consideration)
• Federal Circuit Novartis decision (RCEs)- new rules
• Implementation of AIA/PTL- new rules
• “Late submissions” can reduce PTA
PTA revisions (May 2014, January 2015)
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• AIA (Leahy–Smith America Invents Act 2011)
• First inventor to file (March 16 2013)
• EP application has same benefits as US provisional
• Formalities (Sept 16 2012)
• Assignee filing
• Oath/Declaration
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• Inventor(s)
• File in the name of “entitled person” on behalf of inventor
• Assignee
• Person to whom inventor is obligated to assign
• Evidence must be recorded before payment of issue fee
• Person who shows proprietary interest
• Petition, evidence
Who can file an application as applicant?
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• Inventorship is still important concept in U.S. law
• Before payment of issue fee
• Can now use oath/assignment combination form
• Possible to file substitute statement- (form instead of petition)
• Inventor deceased
• Inventor cannot be found
• Inventor refuses to sign oath
• Signed by other inventors or “entitled party”
• Evidence not required (keep for your records)
Inventor oath
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• USPTO refusing inventor oaths?
• Pre- vs. Post-AIA oath: different required statements
• USPTO model forms
• Applications filed before 16 Sept 2012 (including PCT
applications) use pre-AIA oath
• Applications filed after16 Sept 2012 (continuation) use post-AIA
oath
• For same family, inventor may need to file 2 different oaths
Which oath to file?
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• Harmonize filing requirements and formal processing
• Sets a “maximum” for a number of requirements
• Implemented in EPC2000; differences with PCT
• Each country needs to implement treaty in their own law
Patent Law Treaties Implementation Act (PLTIA) (December 18, 2013)
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• PLT Model forms (Request form)
• Maximum requirements for filing date
• Claims no longer needed for application filing date
• Application may be filed “by reference” to a previously filed application
• PTA reduction if application not “in condition for examination” by 8m from filingdate of national entry date
• Minimum time limits (2m for restriction requirement)
• Representation: required for “juristic applicant”
• Transmittal letter for paying fees and filing application may be signed by juristic applicant or patent owner
Patent Law Treaties Implementation Act (PLTIA) (December 18, 2013)
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• Pre-PTL:
• Unintentional: “woops”
• Unavoidable: “all due care”
• Post-PTL:
• Only unintentional
• Refund possible for extreme circumstances
(e.g., earthquake)
• Simple form
• Difficult to challenge in court
Restoration of rights
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• Restoration of rights: only unintentional
• Revival of an abandoned application
• Delayed payment of the fee for issuing each patent
• Delayed submission of a priority or benefit claim
• Delayed filing of an application claiming priority (within 2m from 12m deadline)
• Delayed maintenance fee payment (time limit removed)
• Petition showing “good and sufficient cause for delay”
• Late filing of certified copy of priority document
• Late filing of previously filed application (file by reference)
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Regular “utility”application
Provisional
Priority- Paris convention priority: external priority- Obtain early filing date (prior art)- Delay costs / gain time
EP priority
Regular “utility”application
Provisional
- Patent term- EP: 20y from “date of filing”- “date of filing” does not include priority filing
EP priority
Regular “utility”application
Provisional
- Patent term
- EP: 20y from “date of filing”
- “date of filing” does not include priority filing
- US (pre-GATT): 17y from grant
- No rush for early date (different prior art rules)
- “Global protection”: need early date
- Inventions made in US require US first filing/foreign filing
license
- US (post-GATT): 20y from filing date of earliest US application
(US utility or PCT)EP priority
Regular “utility”application
Provisional
- Patent term
EP applicant files EP today, PCT in 1y (2016)20y US patent term is 2036
US applicant files US utility today, PCT in 1y20y US patent term is 2035
- US: provisional not taken into account for patent term
US applicant files US provisional on today, PCT in 1y20y US patent term is 2036
EP priority
Regular “utility”application
ProvisionalUS provisional
- Provisional: not examined, abd at 12m, never granted
- Priority based on “earlier application”:
- Any filing equivalent to a regular national filing
- Art 66 EPC: EP application is “equivalent to a regular
national filing”
- Conversion of provisional possible (w/in 12m)
- Effect: patent term calculated from provisional date
EP priority
Regular “utility”application
Provisional
RestrictionRequirement
2m +4m
EP priority
FinalOffice Action
3m +3m
Non-finalOffice Action(s)
3m +3m
NOA Issued patent
DivisionalContinuationContinuation-in-part
PCT application
Corrections, dataPre-GATT patentsPost-GATT: loose patent term
Normally after RR
RestrictionRequirement
2m +4m
Non-finalOffice Action(s)
3m +3m
PCT application
371national entry
Continuation“bypass”
35 USC 371- PCT national entry (30m)- Same PCT application No.- PCT “rules”
35 U.S.C. 365(c)- Continuation/CIP application- New application number- US “rules”
RestrictionRequirement
2m +4m
Non-finalOffice Action(s)
3m +3m
PCT application
371national entry
Continuation“bypass”
35 USC 371- PCT national entry (30m)- Same PCT application No.- PCT “rules”
- Do not need to resubmit priority document
35 U.S.C. 365(c)- Continuation/CIP application- US “rules”
- Submit priority document
RestrictionRequirement
2m +4m
Non-finalOffice Action(s)
3m +3m
PCT application
371national entry
Continuation“bypass”
35 USC 371- PCT national entry (30m)- Same PCT application No.- PCT “rules”
- Do not need to resubmit priority document
- PCT filed 15 Sept 2012- Pre-AIA oath
35 U.S.C. 365(c)- Continuation/CIP application- US “rules”
- Submit priority document- PCT filed 15 Sept 2012, CON
- Post-AIA oath
RestrictionRequirement
2m +4m
Non-finalOffice Action(s)
3m +3m
PCT application
371national entry
Continuation“bypass”
35 USC 371- PCT national entry (30m)- Same PCT application No.- PCT “rules”
- Do not need to resubmit priority document
- PCT filed 15 Sept 2012- Pre-AIA oath
- Lack of unity
- Paperwork
35 U.S.C. 365(c)- Continuation/CIP application- US “rules”
- Submit priority document- PCT filed 15 Sept 2012, CON
- Post-AIA oath
- US “restriction” practice
Regular “utility”application
Provisional
RestrictionRequirement
2m +4m
Can amend claimsFile IDS
EP priority
FinalOffice Action
3m +3m
Non-finalOffice Action(s)
3m +3m
NOA Issued patent
AdvisoryAction
Final Office Action3m +3m
Abandoned
AppealRCE
Abandoned
No replyFile CON
“Stops the clock”
Allowance
File response/Amendment
No replyFile CON
Abandoned
RCEAppeal
File response/Amendment
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action.
In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Final Office Action3m +3m
AdvisoryAction
Final Office Action3m +3m
File response/Amendment
RCEAppeal
File response/Amendment
3 months
6 months(pay 3 m)
AdvisoryAction
Final Office Action3m +3m
File response/Amendment
RCEAppeal
File response/Amendment
3 months
6 months(pay 3 m)
1 month(less than 2m)
6 months(pay 3 m)
AdvisoryAction2.5 m
(before 3m)
AdvisoryAction
Final Office Action3m +3m
File response/Amendment
RCEAppeal
File response/Amendment
3 months
6 months(pay 3 m)
1 month
6 months(pay 3 m)
AdvisoryAction2.5 m
1 month(Less than 2m)
6 months(pay 1 m)
AdvisoryAction
5 m(more than 3m)
Large entity1m: 200 USD3m: 1400 USD
Regular “utility”application
Provisional
RestrictionRequirement
2m +4m
EP priority
FinalOffice Action
3m +3m
Non-finalOffice Action(s)
3m +3m
NOA Issued patent
Certificate of CorrectionReissue(Broadening) ReissueEx parte ReexaminationSupplemental re-examinationPost-grant reviewInter parte review
Who can file When to file Why file?
Certificate of Correction
Patentee Anytime Correct mistakes of a clerical/typographical errorCorrect inventorship (parties in agreement)
No new matter, no re-examination required
Reissue Patentee Anytime before expiry
Correct “error”Priority claim, inventorshipNarrow claims (EP limitation proceedings)
(Broadening) Reissue
Patentee 2y from grant until expiry
Broaden/change claim scope
Ex parteReexamination
Anyone (Patentee)
Anytime Have examiner review prior art
Supplementalre-examination
Patentee Anytime Have examiner review prior artAvoid inequitable conduct
Post-grant proceedings- patentee
Who can file When to file Why file?
Certificate of Correction
(100 USD)
Patentee Anytime Correct mistakes of a clerical/typographical errorCorrect inventorship (parties in agreement)
No new matter, no re-examination required
Reissue(large: 4000 USD)
Patentee Anytime before expiry
Correct “error”Priority claim, inventorshipNarrow claims (EP limitation proceedings)
(Broadening) Reissue(large: 4000 USD)
Patentee 2y from grant until expiry
Broaden/change claim scope
Ex parteReexamination(large: 12,000 USD)
Anyone (Patentee)
Anytime Have examiner review prior art
Supplementalre-examination(large: 4,400 + 12,100 USD)
Patentee Anytime Have examiner review prior artAvoid inequitable conduct
Post-grant proceedings- patentee
Who can file
When to file Why file?
Ex parteReexamination
Anyone Anytime after grant
Similar to oppositionAnonymous
Post-grant review Anyone 9m from grant Similar to opposition
Inter parte review Anyone After 9m from grant
Similar to opposition(more limited grounds for revocation)
Post-grant proceedings- third party
Who can file
When to file Why file?
Ex parteReexamination(large:12,000 USD)
Anyone Anytime after grant
Similar to oppositionAnonymous
Post-grant review(12,000 +18,000 USD)
Anyone 9m from grant Similar to opposition
Inter parte review(9,000 +14,000 USD)
Anyone After 9m from grant
Similar to opposition(more limited grounds for revocation)
Post-grant proceedings- third party