2100 Patentability

2111.05: emphasize substrate relationship requirement for weight

The current text of MPEP 2111.05, if read quickly, seems to suggest that a "function" of "descriptive material" itself carries patentable weight. But this interpretation is not correct: A sheet of instructions as part of the kit claim in In re Ngai (cited in this section) was found to *not* have patentable weight. The "functional" nature of the particular instructions did not save the claims from anticipation over a... more »

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100 Secrecy, Access, National Security, and Foreign Filing

Clarify "expedited" FFL petition in 140, I.

MPEP 140, I. (Jan. 2018), at 100-35--36, is titled "Expedited Foreign Filing License." It references 37 CFR 5.12(b), which relates to a "petition for license." Would the Office please clarify what "Expedited" means here?

For most petitions, the Applicant can submit a separate petition under 1.182 to request expedited consideration of the substantive petition. However, as far as I know, there is only one type of petition... more »

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500 Receipt and Handling of Mail and Papers

Change 509.03's Roman numerals to subsections

509.03 is titled "Claiming small entity status." However, parts VI--X include information other than "how to claim," and part VII is how to *not* claim ("Removal of Status"). I request that parts I--X be changed to subsections 509.03(a)--509.03(j) so that they will appear in the PDF bookmarks, and so that the information in parts VI--X will be be easier to find. As always, thanks for considering this request!

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600 Parts, Form, and Content of Application

605.01: clarify partial and obligated assignee-Applicant

Fact pattern: A corporation is applying for a patent. A first inventor has signed the Assignment papers assigning that inventor's rights to the corporation. A second inventor is on vacation and cannot sign the Assignment before filing, but is under an obligation to assign to the corporation.

MPEP 605.01, and the language in the ADS (PTO/AIA/14 (11-15)), are unclear about whether to list one or two Applicants in this... more »

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600 Parts, Form, and Content of Application

608.04(b) could reference 1893.03(e)

608.04(b) (Jan. 2018) says:

> Applicants can avoid the need to file a preliminary amendment by incorporating any
> desired amendments into the text of the specification, even where the application is
> a continuation or divisional application of a prior-filed application. Applicants are
> strongly encouraged to avoid submitting any preliminary amendments.

However, this "strong[] encourage[ment]" does not apply to national-stage... more »

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600 Parts, Form, and Content of Application

Promote 602.01(a) and 602.01(b) out from under "Inventorship"

602.01(a) and 602.01(b) (Jan. 2018) are nested under 602.01 Inventorship. However, 01(a) and 01(b) deal with the oath/declaration generally, not just with inventorship issues. I suggest promoting them one level, or moving them out from under 602.01. Perhaps 602.01(a) could become 602.10 and 602.01(b) become 602.11. Alternatively, perhaps a new 601.10 "General requirements and procedures" could be added, with 602.01(a)... more »

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600 Parts, Form, and Content of Application

Typo in 601.05(a), II (Jan. 2018 at 600-51)

In 601.05(a), II (Jan. 2018 printing at 600-51, left column), I believe the last sentence should be amended to correct a typo as follows:

 

... must show ... the new information with underlining, as if the incorrect information [[was]] _had been_ submitted in an ADS filed with the application.

 

(all opinions my own)

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600 Parts, Form, and Content of Application

601.05(a), II: Don't need strikeout when first adding Applicant

601.05(a), II (Jan. 2018) at 600-50--51 says that:

A corrected ADS accompanying a request to change the applicant ... must show the changes in applicant information relative to the applicant information on the most recent filing receipt, even if ... an applicant was not previously identified in an ADS ...

However, I don't believe that matches the Office's current practice. Specifically, if no Applicant has been specified,... more »

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600 Parts, Form, and Content of Application

Correction of Inventorship

37 CFR 1.48(c) (text below) requires an additional fee to paid "unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application."

How is this rule being interpreted if only one claim is cancelled?

How is this rule being interpreted in a design application when the change of inventorship is due to an election/restriction... more »

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600 Parts, Form, and Content of Application

Clarify position of copyright notice in spec (1.71/1.77/608.01)

MPEP 608.01(w) (Jan. 2018) and 27 CFR 1.71(d) suggest that a copyright-notice paragraph should "preferably [be] the first paragraph ... of the specification." However, this is often not the case. Would the Office please clarify at least the MPEP, and preferably also 1.71(d), to reflect current practice? For example, in recent US 10,219,356 (the first hit in a quick patft search), the "cross-reference to related applications"... more »

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700 Examination of Applications

706.07(h) references 37 CFR 1.304, omits 1214.07

In 706.07(h), XI.A. (p. 700-135, Nov. 2015):
- The text references 37 CFR 1.304 (left column, bottom). However, the AIA removed and reserved that section (https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e326176). Would you please correct the reference?

- The text does not reference MPEP 1214.07, although 1214.07 does reference 706.07(h), XI. See p. 1200-60 (Nov. 2015). Would you please add the... more »

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