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JF Patent Bar Cards - Patent prosecution process

- Completeness screening whether to assign to an examiner - Examine by the examiner - Allowed: notice of allowance - issue fee - Rejected: 1st office action --> 2nd office action --> final office action --> appeal or RCE  - Rejections often based on 35 USC 101, 102, 103, or/and 112 - Post grant: ex parte reexamination, supplemental examination, derivation proceedings, inter partes review, post grant review, business method patent

JF Patent Bar Cards - Components of patent application

 - Parent applications: Provisional and Non-provisional - Parts: Application data sheet, cover sheet, oath/declaration, drawings, specification, abstract, background of invention, brief summary of invention, summary of invention, and claims (independent and dependent claims), information disclosure statement (patent search)

JF Patent Bar Cards - Reason for having patent law

- Define IP right - Innovation by protecting inventors

JF Patent Bar Cards - Grounds of patent law

- 35 USC - 37 CFR - MPEP - Official Gazette

JF Patent Bar Cards - What is patentable

 - Subject matter invented by human - Novelty, non-obvious, utility - Utility, design, plant - Utility: Machines, manufactures, composition of matter, processes

JF Patent Bar Cards - Stakeholders

- Inventors - Assignees - USPTO - Commissioner - WIPO - Examiners - Patent practitioners - Power of attorney - Patent trial and appeal board

JF Patent Bar Cards - Chapter 2200-2900

Chapter 2200 Citation of Prior Art and Ex Parte Reexamination of Patents Chapter 2300 Interference Proceedings Chapter 2400 Biotechnology - Rules for biological deposits and sequences Chapter 2500 Maintenance Fees Chapter 2600 (Optional) Inter Partes Reexamination Chapter 2700 Patent Terms and Extensions Chapter 2800 Supplemental Examination Chapter 2900 International Design Applications

JF Patent Bar Cards - Chapter 800-2000

Chapter 800 Double Patenting (35 USC 111) - Only one invention - Independence and distinctness Chapter 900 Prior Art, Classification, Search - Prior Art search - Cancelled matter, co-pending abandoned applications and foreign patents Chapter 1000 Matters Decided by Various PTO Officials - Disputes Chapter 1100 Statutory Invention Registration (SIR) Pre-Grant Publication (P-G Pub) and Preissuance Submissions Chapter 1200 Appeal Chapter 1300 Allowance and Issue - Notice of allowance - Issue fee - Withdrawing from issue Chapter 1400 Correction of Patents - Reissue applications Chapter 1500 Design Patents Chapter 1600 Plant Patents Chapter 1700 Miscellaneous - Restrictions from former examiners - Official Gazette - US Philippines search engine Chapter 1800 Patent Cooperation Treaty (PCT) Chapter 1900 Protest Chapter 2000 Duty of Disclosure

JF Patent Bar Cards - Appendix I, II, III, IV, V

Appendix I Prior Art Rejections - Prior art rejections including 35 USC 102 and 103 - AIA Appendix II 35 USC 102 Rejections - AIA and pre-AIA rejections under 35 USC 102 for lack of novelty Appendix III 35 USC 103 Rejections - Rejections under 35 USC 103 based on the obviousness Appendix IV Disqualify Prior Art - 37 CFR 1.130, 1.131, 1.132 Appendix V 35 USC 112 (Specification) - Written description, Enablement, Best Mode

JF Patent Bar Cards - Chapter 2100

Patentability - What is patentable - 35 USC 101, 102, 103 - Requirements for the specification

JF Patent Bar Cards - Chapter 700

Chapter 700 Examination of Applications - Examination process - Petitions - Suspension of action - Continuing examination - Interviews - Amendments

JF Patent Bar Cards - Chapter 200, 300, 400, 500, 600

Chapter 200 Types, Cross-Noting and Status of Application - National and international applications - Different types of applications (DIV, CON, CIP, Provisional, etc.) - Claiming the priority of an earlier applications in the US or others - Application status Chapter 300 Ownership and Assignment Chapter 400 Representative of Inventor or Owner - Power of attorney - Correspondence Chapter 500 Receipt and Handling of Mail and Papers - Small and micro entity statuses Chapter 600 Parts, Form and Content of Application

JF Patent Bar Cards - Chapter 100

Chapter 100 Secrecy, Access, National Security and Foreign Filing - Who to access which application types - Secrecy orders - Foreign filing

JF Patent Bar Cards - MPEP Appendices

- Appendix L: Patent Laws  - Appendix R: Patent Rules  - Appendix T: Patent Cooperation Treaty (International Patent Law Treaty) - Appendix AI: Administrative Instructions Under the PCT  - Appendix P: Paris Convention

JF Patent Bar Cards - Patent Bar Exam

  - 100 questions for 6 hours divided over 2-3 hour blocks of 50 questions each - 5 answer choices - Computerized exam any weekday - 90 questions are scored - Score >70% to pass (>63 questions) - Review session is available for an additional fee

JF Patent Bar Cards - How to utilize MPEP

How to use MPEP - Look-up facts - Search by chapters -  Understand the topics each chapter covers.

JF Patent Bar Cards - Correcting errors under the PCT

A request for correction of an obvious error in PCT must be made within 26 months from the priority date.

JF Patent Bar Cards - PCT missing parts

If the PCT receiving office discovers missing parts and invites the applicant to supply them, they have two months from the invitation date to do so.