Comments on: Type and Status of Applications (MPEP 200) http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/ Patent Bar Review and Study Guide Sat, 19 May 2012 22:04:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: BigBadVoodoDaddy http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13933 BigBadVoodoDaddy Wed, 03 Aug 2011 02:16:33 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13933 119 a-d deals with foreign filing and foreign priority. 102 b deals with prior art one year or more before****FILING IN THIS COUNTRY******. So in effect if there is prior art more than one year prior to filing in the US - its there, showing a prior filing in another country still does not overcome the fact that it was there for a year before you filed in the US. thats why 102 b is a problem. 119 a-d deals with foreign filing and foreign priority. 102 b deals with prior art one year or more before****FILING IN THIS COUNTRY******. So in effect if there is prior art more than one year prior to filing in the US – its there, showing a prior filing in another country still does not overcome the fact that it was there for a year before you filed in the US. thats why 102 b is a problem.

]]> By: littleyellowduck http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13899 littleyellowduck Tue, 02 Aug 2011 14:02:24 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13899 Thank you so much. I have another question. Why 102(b) rejection cannot be overcome by 119 a-d priority? Thank you so much. I have another question. Why 102(b) rejection cannot be overcome by 119 a-d priority?

]]> By: BigBadVoodoDaddy http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13898 BigBadVoodoDaddy Tue, 02 Aug 2011 13:30:30 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13898 Yes - its almost like a CIP (not quite). But the new matter will not get the benefit of the earlier filing date - obviously. For example one could have an improved embodiment, however the improvement was not described in the provisional and hence cant benefit from the date. However people do it all the time for that very reason - since a narrower embodiment (improvement or a species) may be easier to get a a patent on, while the parent (broader embodiment and common features) can sucessfully avoid the prior art because of its earlier priority date. Yes – its almost like a CIP (not quite). But the new matter will not get the benefit of the earlier filing date – obviously. For example one could have an improved embodiment, however the improvement was not described in the provisional and hence cant benefit from the date. However people do it all the time for that very reason – since a narrower embodiment (improvement or a species) may be easier to get a a patent on, while the parent (broader embodiment and common features) can sucessfully avoid the prior art because of its earlier priority date.

]]> By: Little yellow duck http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13885 Little yellow duck Mon, 01 Aug 2011 23:09:31 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13885 Can a utility application which claims the benefit of a provisional application contain subject matter that is not included in the provisional application? Can a utility application which claims the benefit of a provisional application contain subject matter that is not included in the provisional application?

]]> By: littleyellowduck http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13332 littleyellowduck Wed, 13 Jul 2011 18:48:38 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-13332 the priority period of provisional or foreign application is not measured in patent term, right? the priority period of provisional or foreign application is not measured in patent term, right?

]]> By: littleyellowduck http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-12557 littleyellowduck Mon, 27 Jun 2011 16:58:01 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-12557 Please see the following scenario Mary wants to apply a patent for her invention and she wants her patent expires as far as possible in the future. Her invention was described in a magazine almost one year ago. The most appropriate action would be: A. File a provisional application before the one year anniversary of the publication. File non-provisional application before the one year anniversary of the provisional application claiming the priority of the provisional application. Please see the following scenario

Mary wants to apply a patent for her invention and she wants her patent expires as far as possible in the future. Her invention was described in a magazine almost one year ago. The most appropriate action would be:

A. File a provisional application before the one year anniversary of the publication. File non-provisional application before the one year anniversary of the provisional application claiming the priority of the provisional application.

]]> By: littleyellowduck http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-12383 littleyellowduck Mon, 20 Jun 2011 17:59:52 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-12383 Pete has an issued patent that claims priority to Application D. I don't understand which one is prior, the issued patent or application D? Pete has an issued patent that claims priority to Application D.

I don’t understand which one is prior, the issued patent or application D?

]]> By: Young http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-4346 Young Fri, 22 Oct 2010 18:59:07 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-4346 I am confused on this issue as follows, would you please make it clear, thanks. --- In the situation where a nonprovisonal application claiming the benefit of the provisional application, the priority date should be the filing date. In the situation where a nonprovisional application is converted from a provisional application, the priority date is still the filing date. I did not see any adverse effect on patent term in the latter case. I am confused on this issue as follows, would you please make it clear, thanks.

—
In the situation where a nonprovisonal application claiming the benefit of the provisional application, the priority date should be the filing date.

In the situation where a nonprovisional application is converted from a provisional application, the priority date is still the filing date.

I did not see any adverse effect on patent term in the latter case.

]]> By: VC http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-1203 VC Tue, 16 Mar 2010 16:29:20 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-1203 MPEP 1502.01(I): *>Effective July 14, 2003, continuedonly(see 37 CFR 1.53(d)(1)(i)). Prior to July 14, 2003, CPA practice was< available for utility and plant applications only where the prior application has a filing date prior to May 29, 2000 **. MPEP 1502.01(I):
*>Effective July 14, 2003, continuedonly(see 37 CFR 1.53(d)(1)(i)). Prior to July 14, 2003, CPA practice was< available for utility and plant applications only where the prior application has a filing date prior to May 29, 2000 **.

]]> By: patentbar http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-1202 patentbar Fri, 07 Mar 2008 16:28:53 +0000 http://mypatentbar.com/2007/12/02/type-and-status-of-applications-mpep-200/#comment-1202 Status of Applications - A new application has not received an action by the USPTO examiner (first action). A rejected application is a nonprovisional application that contains an unanswered UPSTO action. An amended application is a nonprovisional application where the applicant responds to a office action. An abaondoned application has either been formally abandoned or the applicant does not take the proper action at some point during prosecution (misses a deadline). An incomplete application lacks essential parts and is not accepted by the USPTO. Status of Applications -
A new application has not received an action by the USPTO examiner (first action).
A rejected application is a nonprovisional application that contains an unanswered UPSTO action.
An amended application is a nonprovisional application where the applicant responds to a office action.
An abaondoned application has either been formally abandoned or the applicant does not take the proper action at some point during prosecution (misses a deadline).
An incomplete application lacks essential parts and is not accepted by the USPTO.

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