Patent Bar flashcards
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32 cards. Read the term and the definition here. The deck at the top of this page is optional.
- Filing date requirements
- A filing date is granted when the Office receives a specification and any required drawings; claims are not required for a provisional application but are for a nonprovisional.
- Dependent claim scope
- A dependent claim incorporates all limitations of the claim from which it depends and must further limit the claimed subject matter; it is narrower than its parent claim.
- RCE purpose
- A Request for Continued Examination reopens prosecution after a final rejection or allowance; it requires a fee and a submission and does not require a new application.
- Information Disclosure Statement
- An IDS discloses prior art known to the applicant; filing before the first Office action avoids a fee, and later filing requires a certification of timeliness.
- Notice of Allowance
- A Notice of Allowance states that the application is allowed; the issue fee must be paid within 3 months or the application becomes abandoned.
- 35 U.S.C. 102(a)(1)
- A person is not entitled to a patent if the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date.
- Grace period
- Under 35 U.S.C. 102(b)(1), a disclosure made by the inventor or one who obtained the subject matter from the inventor within one year before the filing date is not prior art.
- Patent term
- The term of a utility patent is 20 years from the earliest non-provisional U.S. filing date, subject to patent term adjustment for Office delays.
- Provisional application
- A provisional application requires a specification and drawings but no claims; it establishes a priority date for 12 months if a nonprovisional is filed within that period.
- Final rejection
- A rejection is final when the examiner considers the application ready for appeal; after final, an applicant may file an after-final response, an RCE, or an appeal.
- Restriction requirement
- A restriction requirement is issued when the examiner finds independent and distinct inventions; the applicant may traverse or elect without traverse.
- Examiner's answer
- The examiner's answer responds to the appeal brief; a reply brief may be filed within 2 months of the answer.
- Pre-appeal brief conference
- A pre-appeal brief conference request is filed with the notice of appeal to seek review of the rejection before an appeal brief is filed.
- Anticipation standard
- A claim is anticipated under 35 U.S.C. 102 only if a single prior art reference discloses each and every limitation arranged as in the claim.
- Obviousness rationale
- A rejection under 35 U.S.C. 103 requires a reason to combine references, such as a teaching, suggestion, or motivation, or a reasonable expectation of success.
- Enablement requirement
- Under 35 U.S.C. 112(a), the specification must teach how to make and use the invention without undue experimentation by one of ordinary skill in the art.
- Written description
- Under 35 U.S.C. 112(a), the specification must reasonably convey that the inventor possessed the claimed invention as of the filing date.
- Duty of disclosure
- Under 37 C.F.R. 1.56, each inventor and practitioner must disclose to the Office all information known to be material to patentability.
- Conflict of interest
- Under 37 C.F.R. 11.107, a practitioner may not represent a client if the representation is materially limited by another interest without informed consent.
- Certification of filings
- Under 37 C.F.R. 11.18, a practitioner certifies that a filed paper is not for an improper purpose and that factual contentions have evidentiary support.
- Client confidentiality
- Under 37 C.F.R. 11.106, a practitioner must keep client information confidential; disclosure is permitted only in limited circumstances such as preventing a crime.
- New matter prohibition
- Under 35 U.S.C. 132(a), an amendment may not introduce new matter; new matter is subject to rejection and may be excluded from the application.
- Divisional application
- A divisional application is filed in response to a restriction requirement and is entitled to the parent application's filing date for the elected invention.
- Continuation-in-part
- A continuation-in-part adds new matter to the parent disclosure; only claims supported by the new matter receive the later filing date.
- Revival of abandonment
- Under 37 C.F.R. 1.137, an abandoned application may be revived by petition with a fee, showing unavoidable or unintentional delay.
- 35 U.S.C. 120 benefit
- A later application is entitled to the earlier filing date of a copending application if it discloses the same invention and complies with the statute.
- Paris Convention priority
- Under 35 U.S.C. 119, a foreign application gives a 12-month priority period for utility applications and 6 months for design applications.
- Burden of proof
- Under 35 U.S.C. 282, a challenger must prove invalidity by clear and convincing evidence; the patent is presumed valid.
- Joint inventors
- Under 35 U.S.C. 116, joint inventors may file together; each inventor need not contribute to every claim but must contribute to the invention.
- Interview with examiner
- Under MPEP 713, an applicant may request an interview with the examiner; the substance of the interview must be made of record.
- Appeal to PTAB
- A notice of appeal must be filed within 2 months of the final rejection with a fee; the appeal brief follows within 2 months.
- Publication of application
- An application is published 18 months after the earliest filing date unless a nonpublication request is filed with the application.