UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

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●●●●●●Consequences of incorrectidentification of inventorsAs mentioned, the Examining Corps needs to know who theinventors are to be able to examine the case (knowing what isthe work of another)Changing the inventor list during prosecution imposes extraburdens upon the Examining CorpsUSPTO plans to charge a punitive fee for such changes if madeafter the FOAM (first office action on the merits)USPTO plans to reduce PTA due to applicant delay in updatingthe applicant list promptlyBest Practice is to get it right the first timeBest Practice is to monitor the FOAP (first office actionprediction) and try very hard to get any inventor-list correctionsdone before the FOAM25Modifications to the application afterthe Declaration is signed?● The new Rules eliminate the prohibition (37CFR § 10.23) against modifying the applicationafter the Declaration is signed●This permits modifying the application after theDeclaration is signed● For some practitioners this will make the $130late-declaration fee a thing of the past● Some practitioners are interpreting this broadly2726Forms PTO/AIA/08 and 10●●●●Declaration with multiple inventor namesUsable without an ADSBut only in the rare case where there are noforeign priority claims, no domestic benefitclaims, and no non-inventor applicantUse of Form PTO/AIA/08 will be rare
The Application Data Sheet28Application Data Sheets●●●Under the new Rules, an ADS is mandatory innearly all patent applications filed on and afterSeptember 16, 2012The sole exception is a patent application thathas no foreign priority claims and has nodomestic benefit claims (Sections 119e and120) and that does not have a non-inventorapplicantThe Best Practice going forward is to prepareand file an ADS in all non-provisional patentapplications29How to file the ADSs●●●●The rules permit filing an ADS as scanned pageimagesWith such an ADS, it is up to USPTO personnelto hand-key the bibliographic data into PalmThis offers many opportunities for error andomissionEach error or omission will require filing arequest for a corrected Filing Receipt, anddocketing to check whether the correction wasmade correctly30
Page 1: UNIFORM CERTIFICATE OF ATTENDANCE F
Page 4 and 5: SPTO explains the America Invents A
Page 6 and 7: PTO/SB/01A (01-09)Approved for use
Page 8 and 9: PTO/SB/ (06-12)Approved for use thr
Page 10 and 11: PTO/ (06-12)Approved for use throug
Page 12 and 13: PTO/(06-1Approved for use through 0
Page 14 and 15: What will change about the oath ord
Page 16 and 17: Action item●●●If you have not
Page 18 and 19: But 37 CFR § 1.63 says:A person ma
Page 20 and 21: ●●●Combined assignment anddec
Page 24 and 25: How to file the ADSs●●If you pr
Page 26 and 27: Supplemental ADSAny ADS filed after
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Page 38 and 39: Consequences of AIA for PCT filers
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Page 42 and 43: ●●●Choosing between a “bypa
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Page 46 and 47: Exercises relating to September 16,
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