At the end of the first paragraph of MPEP § 201.07, it says "For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 201.11." There is no MPEP § 201.11 This reference likely should be to MPEP § 211.01(b), which discusses claiming the benefit of a nonprovisional application.
the phrase "the same invention claimed" in the first sentence of 201.07 should be replaced with
--an invention disclosed--
Continuation applications are sometimes but not always for the same invention. By statue they are only required to be based on the same disclosure.
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 »
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!
MPEP Sec. 602.01(c)(1) cites the wrong version of CFR 1.48. Specifically, it cites the pre-aia version and not the latest version.
Immediately following the Title of section 602.01(c)(1) in the Editor Note, it seems that "applications" must be changed to --requests--.
The previous rules provided an alternative method for correcting errors in provisional applications. Specifically, in § 201.03 section VI the 8th edition (Rev. 9 2012) the MPEP instructed that filing a non-provisional application with inventor overlap would correct any errors as to inventorship in a provisional application. This language, however, is absent in the present edition even though it is based on the same law... more »
As far as I understand, right now no claim is required to establish a filing date. But search around "at least one claim" on chapter 600, you still get a few such old descriptions.
The MPEP should more clearly spell out when drawings are actually necessary. In process inventions, it seems that drawings should not be required, but the text of MPEP 608.02 seems to be an open invitation to examiners to make unnecessary requirements. Moreover, what exactly does "admits of illustration by a drawing" mean? Is it not possible to articulate the statute in more clear language into the rule? 35 USC 113... more »
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 »
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 »
602.08(a), II (Jan. 2018), p. 600-97, left column, first full paragraph:
Line 5 is missing an "is" at the end of the line. The text should be amended: "If the inventor lives at a location which >>is<< different from the inventor’s mailing address...".
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 »
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)
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 »