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Incorporation by Reference

Posted by longacrepatentbarreview on October 3, 2011

Think eating your cake and having it too. That’s incorporation by reference.

You want to include as much disclosure in your application as you reasonably can without annoying the examiner and judge who may eventually decide the fate of this application. The more disclosure, the more likely the claims will be interpreted broadly and will be held to infringe. The more disclosure, the less likely an application and eventual patent will be found wanting under the first paragraph of 35 USC 112.

More is indeed better, up to a point, and here’s where incorporation by reference comes in. You can incorporate by reference any amount of disclosure, thousands of pages if you like, from other US patents and publications. It’s treated legally as if all of those pages were there to be read, instead of available for look up.
And of course that’s the lower limit. You want the examiner and judge to have everything important at their fingertips when they review your application and patent. You don’t want to send them to look up part of your disclosure somewhere else. But for those “you might need all this someday” incorporation by reference is a cool solution. It’s wise to use those specific words to make sure it’s treated as part of the specification.

Incorporation by reference can happen automatically as set forth in 27 CFR 1.57. This happens when you have a patent application in which a portion of the disclosure was inadvertently omitted, but it was in an earlier application from which the latter application has priority.

It’s just a cool thing

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Posted by longacrepatentbarreview on September 30, 2011

The attorney who prepared the application you are now prosecuting was not very good at grammar or spelling. You want to file a preliminary amendment cleaning up the specification, without of course adding any of that dread new matter. Can you do that and, if so, how?

It’s easy. It used to be the case that you could file a substitute specification only when the examiner required one. You may see that on old exam questions so make a mental note that such is Kaput.
Today, 37 CFR 1.125, MPEP 608.01(q) lets you file a substitute or rewritten specification whenever your little heart desires. The examiner still can require a new specification as well. You can do this up until payment of the issue fee, after which a new spec might interfere with issuance and your Office will not tolerate that.
You do have to include a statement that you haven’t snuck any new matter into the new spec.

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Simulated or predicted test results

Posted by longacrepatentbarreview on September 27, 2011

Your new client has come to your luxurious office overlooking The White House to discuss filing a new application on a method of removing solids from waster water. You ask if the inventorr has done any tests. The answer is no. What is your next question?

That next question is whether your client can provide you with predicted or prophetic test results to include in the application.
The more examples are included in a patent applications, the broader the scope that will likely be given the claims, particularly if you choose to avail yourself of the means functions format authorized by the sixth paragraph of 35 USC 112.

Can you include such examples? You bet your sweet bippy your can, as authorized by MPEP 608.01(q). The only caveat is to make sure that any such examples included are NOT represented as actual results. That means at the least avoiding use of the past tense.

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Practice questions anyone?

Posted by longacrepatentbarreview on September 22, 2011

Here are three really good ones!

1. The subject matter of a design patent may relate to any one of the following EXCEPT ___________________?

(A) A scheme of surface ornamentation
(B) The configuration of an article
(C) The shape of an article
(D) The surface ornamentation applied to an article
(E) The combination of configuration and surface ornamentation

2. John Doe was traveling in Canada on business when, late one night, sitting before a warm fire and polishing off a fine bottle of pear brandy, he conceived of a way to use apple parings to create a unique brandy. The next day he tried out his idea on a small still one of his friends maintained, and all were satisfied with the product. The date of conception was October 1, 2011 and the date of reduction to practice was October 2, 2011.
He filed a Canadian application but, distracted by personal financial reverses, he allowed it to be abandoned after it was published on June 12, 2012.
John’s interest in his invention was revived when his brother in law offered to pay the cost of filing an application in the United States in return for a one half undivided interest. Assuming the US application will be filed on April 4, 2013, is the application barred by 35 USC 102?

(A) Yes, because the published Canadian application is a bar under 35 USC 102(d)
(B) No, because the Canadian published application is Doe’s
(C) Yes, because the conception and reduction to practice did not take place “in this country.”
(D) No, because the date of the Canadian publication is less than one year before the US filing date
(E) Yes, because the Canadian priority has been lost

3. On May 3, 2011, a final rejection was mailed to the applicant in a non-provisional application relating to the processing of pig fat. The action set a shortened statutory three month period to respond. Angered by the continued rejection of all the claims, the applicant filed a notice of appeal on May 23, 2011. However, after retaining a new attorney and studying the claims, applicant came to the conclusion that the claims did not properly bring out the patentable features, and that new claims should be submitted. .
On July 27, 2006, applicant filed a proper Request for Continued Examination (RCE) with amended claims and arguments as to how the amended claims distinguish over the prior art. Is an extension of time required to file the RCE and, if so, how long?
(A) No extension of time is required, since the RCE was filed within the original three month period to respond
(B) A one month extension of time is required
(C) A two month extension of time is required
(D) No extension of time is required since the RCE was filed within the statutory six month period
(E) A three month extension is required
Answers

1. Trick question. (A) is correct. MPEP 1502. Design patents protect things, three dimensional things, not images. This is one of those questions where logic won’t help. You have to know or find that MPEP statement. A scheme of surface ornamentation is interpreted to be apart from the object and that cannot be.
2. (D) is correct. You must know your 35 USC 102 in and out. Only 102(b) can apply here and the 102(b) date is less than a year before the US filing date so there is no bar
3. (B) is correct. Filing the Notice of Appeal set a two month period to file an appeal brief or otherwise act. That deadline was not met, and thus a one month extension is required in order for the application to be pending at the date that the RCE is filed. An RCE can be filed only of pending applications.

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Posted by longacrepatentbarreview on September 19, 2011

In the last blog we talked about requirements for information and I promised then to contrast that procedure with an information disclosure statements (IDS).

Requirements for Information come from the examiner. Information disclosure statements come from the applicant.

The information disclosure statement is rooted in the duty of every applicant to disclose information material to patentability, as embodied in 37 CFR 1.56. The duty is mandatory; the form of complying with the duty is not. Nonetheless, the Office really encourages compliance using IDSs. Moreover, to make the examiner’s job efficient, the Office encourages early submission of these papers, in effect fining the applicant for late submission.

An IDS is timely filed if submitted within three months of filing or before a first official action on the merits is mailed by the Office, whichever happens last. Since we have no idea when that first action will get sent out, most patent attorneys docket three months as the deadline to get an IDS on file. If you fail to file an IDS before that first action on the merits, but you get it in before appeal or a final rejection is mailed, then the Office requires either a statement that what you are submitting has just recently been found, or a fee, a fine in essence. After appeal is pursued or a final rejection is mailed, the Office will accept an IDS only by both establishing it could not have been filed earlier and paying a fee. If you can’t make that statement, then your only practical alternative is to file a continuing application or an RCE, in both instances postponing the issuance of the patent and likely shortening its term

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Posted by longacrepatentbarreview on September 14, 2011

A student wrote me a few days ago as follows:

“ Examiners must have questions sometimes after they read an application. What can they do if they want to hear what an attorney has to say?”

Good questions and stuff you need to know both for the exam and in practice.

You won’t find it in the MPEP, but examiners do occasionally pick up the phone, and call the attorney of record to pose a question. It’s rare for two reasons. First, the examiner usually is told that the attorney will contact the client and call back. That means delay and examiners are on a schedule with limited time to spend on each application. Second, the communication is all oral so there is no penalty for mis-statements.

More formally, the examiner can send to the attorney of record by mail a Requirement for Information as set forth in 37 CFR1.105. This inquiry can be not just to the attorney of record, but also to each inventor and any assignee of the entire interest in the application.
But examiners look mostly on this procedure as just slowing them up, and asking for trouble for not making the quarterly quota, so such requirements get made once every couple of blue moons.

How does this differ from an information disclosure statement? We will take up that question in the next blog

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How about some practice questions today?

Posted by longacrepatentbarreview on September 9, 2011

1. A notice of allowance is mailed to the applicant in a non-provisional patent application on September 25, 2011. In which of the following situation would the issue not be considered to be timely filed?

(A) The issue fee is filed at the Office on Monday December 28, 2011

(B) The issue fee is filed in the Office on November 25, 2011

(C) The issue fee is mailed to the Office on Thursday, December 24, 2011 by first class mail and arrives on Monday December 28, 2011

(D) The issue fee is received by the Office on January 12, 2012, accompanied by a request for a one month extension of time and the required extension fee.

(E) The issue fee is mailed to the office with a proper certificate of mailing on December 28, 2011, and arrives at the Office one week later

2. Applicant Wilson Pickett discovered after prosecution had been closed by mailing of an ex parte Quayle action that the last page of the specification had been inadvertently omitted when the non-provisional application was filed. The application as originally filed contained a claim for the benefit of a prior filed application under 37 CFR 1.78. That prior filed application included the missing last page of the specification.

Which of the following would be the most appropriate action to take?

(A) Prepare and file an amendment submitting the missing page

(B) File a Request for Continued Examination (RCE) to reopen prosecution, accompanied by the appropriate fee and an amendment in compliance with 37 CFR 1.57(a)

(C) Telephone the examiner and ask her to amend the application by examiner’s amendment to include the missing page

(D) File a Continued Prosecution Application with the missing page

(E) File a paper asking the examiner to advise whether the missing page is necessary to satisfy the requirements of 35 USC 112.

3. To obtain the benefit of an earlier filed, copending application, the latter application must include ________________________

(A) a claim for priority

(B) a reference to the prior application in compliance with 37 CFR 1.78(a)

(C) the specification of the earlier application in its entirety

(D) no new inventors not coinventors or inventors of the earlier application

(E) claims which are supported by the disclosure of the earlier application

1. (D) is correct. The deadline to pay the issue fee is statutory, and cannot be extended. Any deadline that files on a Saturday, Sunday or holiday is automatically extended to the next day that the Office is open for business. December 25 is a holiday you should instantly recognize so the deadline is extended until Monday December 28, 2009. Certificates of mailing work for paying the issue fee so mailing the fee with a certificate on the last day is proper.

2. (B) is correct. MPEP 201.17, Example 2. An ex parte Quayle action is one that closes prosecution, but allows you to correct enumerated formal mistakes. If you want to introduce new or amended claims after an Ex Parte Quayle, you are going to have to file an RCE or continuing application

3. (B) is correct. This is a typical tricky PTO question. We can easily eliminate (E) and (C). Continuing applications can have more or less than the parent application. In that instance, priority would extend to some claims, and not to others. (D) is likewise clearly wrong. Different disclosure will often introduce or delete inventors. How about (A)? You do in fact sort of claim priority when you include that reference to the earlier application. But (B) is dead on, no doubt correct. So in choosing between the one that is sort of right and the one that is clearly right which do you pick?

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Posted by longacrepatentbarreview on September 7, 2011

You have just interviewed the examiner, a sallow recent graduate whose ignorance of patent law is exceeded only by her body odor. In the elevator, you meet one of your old cronies and tell him that you have once more convinced the Examiner to allow a claim that reads on devices from around when US Grant was President.

Unfortunately, you do not know that the Office long ago began secretly recording everything said in its elevators. Can the Office use this admission against you?

Maybe.

This, of course, is a ridiculous and extreme situation, and it’s unclear whether your admission is of a fact, which can be used against you, or an opinion, which cannot. But admitting that a specific device was on sale more than one year prior to your filing date can be used to make a rejection under 35 USC 102 or 103, no further evidence being required.

MPEP 706.02(c)

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Correcting Inventorship

Posted by longacrepatentbarreview on September 2, 2011

You are certain to see a question of two on correcting inventorship on your exam. There are three different procedures available to correct inventorship as the application wends its way through the Office and during its life as a patent. Know them cold!

Stage 1 – An application has been filed, but the executed declaration has not yet been filed.

At this time, all that is required is to file an executed declaration correctly identifying the true inventors and having them sign. An executed declaration overrides an unexecuted one, or a mere statement.

Stage 2 – After the executed declaration has been filed and before the patent issues.

During this time to correct inventorship, you have to jump through the appropriate hoops of 37 CFR 1.48. You must have all those conditions and requirements memorized on exam day.

Stage 3 – The patent has issued

Under 35 USC 256 the patent owner may petition the Office Director to correct inventorship or any Federal court in which the patent is being litigated may correct inventorship

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Posted by longacrepatentbarreview on August 30, 2011

We will soon have a new patent law which, among other things, establishes a first to file system. The internet is full of strident opposition to these changes. Some commentators have gone so far as to insist that the new law, and particularly the First to File System, is unconstitutional. What is that all about?

The Constitution empowers the United States Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”

Commonly this is referred to as the Copyright Clause, not the Patent Clause.

First, it is not at all clear that Congress is required to provide a patent system. We have always had one so this issue has never been seriously addressed. Certainly the language of the Constitution suggests that it is something Congress may do, not must do.

So why is a first to file system said to be unconstitutional?

A First to File System sounds like whoever gets on file first gets the patent, whether he or she made the invention or simply copied someone else’s invention. If that were true then those arguing in favor of unconstitutionality might have a point. Only inventors get patents, according to the Constitution.

But the title is mis-leading. It’s not just a first to file system. It’s a system which gives the patent among two rival claimants, each of which independently made the invention, to the one who filed first. In other words, to win the patent, you have to not only be the first to file, but to have made the invention. You have to be an inventor. The Office doesn’t give out patents to those who stole the invention from the true inventor.

Sounds to me a pretty silly argument that this is unconstitutional. Moreover, can you really see the Supreme Court messing with this? I can’t.

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