Patent Office Rules and Practice

Author: Lester Horwitz
Publisher: LexisNexis Matthew Bender
ISBN: 9780820516059
Published In: Subscription-type (Contents updated periodically)
Format: Loose-leaf
Jurisdiction: U.S. ? Disclaimer:
Countri(es) stated herein are used as reference only

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The Cornerstone of Any Thriving Patent Law Practice.

Detailed Rule-by-Rule Analysis of the Patent and Trademark Office Rules of Practice.

Included is the text of the rules contained in Title 37 of the Code of Federal Regulations, interpretations of their meanings and explanations of their effect on practice with citations to relevant case law.

Covers Every Area of PTO Practice.

This essential reference provides patent registration applicants with guidelines on the practices and procedures relating to the filing and review of patent applications filed in the Patent and Trademark Office.

The Patent and Trademark Office's Rules Book.

This separate desk reference is updated quarterly, and saves extensive research time by centralizing the most recent statutes and regulations affecting patent law practice.

Practice-Proven Forms for Handling All Transaction With the PTO.

The forms, which are accepted by the PTO, cover nearly every aspect of practice before the PTO and almost every conceivable situation the practitioner might run into, including: transmittal letters for every type of submission to the PTO; forms necessary for filing regular, continuation-in-part, divisional, and international applications; requests for re-issue and re-examination; actions after final rejection and appeals; and responses, amendments, and letters to the PTO.

Available in both print and CD-ROM formats, Patent Office Rules and Practice include:

l The text of the sections of various United States Code titles that relate to patent law

l The full text of the Patent Cooperation Treaty, accompanying regulations and administrative instructions

l The text of the Manual of Patent Examining Procedure (MPEP)

l The text of selected relevant notices, directives, clarifications and Helpful Hints issued by the PTO

l More than 350 practice-proven blank forms that can be filled out, and filed with the PTO

l The forms include checklists of what must be done to submit an application

CHAPTER VI DISCLOSURE III

CHAPTER VII DISCLOSURE IV

CHAPTER VIII EXAMINATION AND REJECTION

CHAPTER IX RESPONSE AND FURTHER CONSIDERATION [Rules 111-114]

CHAPTER X AMENDMENTS

CHAPTER XI OVERCOMING REJECTIONS: AFFIDAVITS AND INTERVIEWS

CHAPTER XII TIME FOR RESPONSE--ABANDONMENT

CHAPTER XIII DIVISION AND ELECTION OF SPECIES

CHAPTER XIV DESIGN APPLICATIONS

CHAPTER XV PLANT APPLICATIONS

CHAPTER XVI REISSUE APPLICATIONS

CHAPTER XVII PETITION AND RULES

CHAPTER XVIII EX PARTE APPEAL: BOARD

CHAPTERS XIX-XX [RESERVED]

CHAPTERS XXI PUBLICATION OF APPLICATIONS

CHAPTERS XXII-XXVIII [RESERVED]

CHAPTER XXIX PUBLIC USE PROCEEDINGS

CHAPTER XXIXa STATUTORY INVENTION REGISTRATION (SIR)

CHAPTER XXX REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT

APPENDIX 30A RULES OF PRACTICE before the UNITED STATES COURT OF APPEALS for the FEDERAL CIRCUIT

CHAPTER XXXI ALLOWANCE AND ISSUANCE OF PATENT

CHAPTER XXXII DISCLAIMER AND CORRECTION OF PATENT

CHAPTER XXXIII FILING NOTICE OF ARBITRATION AWARD

CHAPTER XXXIV [RESERVED]

CHAPTER XXXV AMENDMENT OF RULES

CHAPTER XXXVA MAINTENANCE FEES

CHAPTER XXXVI INTERNATIONAL PROCESSING PROVISIONS

CHAPTER XXXVII EX PARTE REEXAMINATION

CHAPTER XXXIX EXTENSION OF PATENT TERM

APPENDIX 39A FDA Regulations on Extension of Patent Term

CHAPTER XL BIOTECHNOLOGY DISCLOSURE; DEPOSIT OF BIOLOGICAL MATERIAL

CHAPTER XLI APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCES

CHAPTER XLII ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

CHAPTER XLIII INTER PARTES REEXAMINATION

CHAPTER XLIV [RESERVED]

CHAPTER XLV REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE

CHAPTER XLVII PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

APPENDIX 47A United States Patent and Trademark Office Board of Patent Appeals and Interferences Trial Section

Publication Part II. Notices

NOTICES--January 1989 through June 1989

NOTICES--July 1989 through October 1989

NOTICES--November 1989 through July 1991

NOTICES--July 1991 through April 1992

NOTICES--April 1992 through December 1992

1993 NOTICES

1994 NOTICES

1995 NOTICES

1996 NOTICES

1997 NOTICES

1998 NOTICES

1999 NOTICES

2000 NOTICES

2001 NOTICES

2002 NOTICES

2003 NOTICES

2004 NOTICES

2005 NOTICES

2006 NOTICES

2007 NOTICES

2008 NOTICES

Publication Part III. Patent-Related Sections of the United States Code

TITLE 5 United States Code

TITLE 7 United States Code

TITLE 10 United States Code

TITLE 15 United States Code

TITLE 17 United States Code

TITLE 18 United States Code

TITLE 19 United States Code

TITLE 20 United States Code

TITLE 21 United States Code

TITLE 22 United States Code

TITLE 26 United States Code

TITLE 28 United States Code

TITLE 30 United States Code

TITLE 31 United States Code

TITLE 35 United States Code

TITLE 42 United States Code

TITLE 44 United States Code

TITLE 48 United States Code

TITLE 50 United States Code

Publication Part IV. Code of Federal Regulations

TITLE 37 Code of Federal Regulations Patents, Trademarks, and Copyrights

Publication Part V. Patent Cooperation Treaty

Patent Cooperation Treaty

Regulations Under the Patent Cooperation Treaty

Patent Cooperation Treaty Administrative Instructions

Publication Part VI. Paris Convention

Paris Convention for the Protection of Industrial Property

Publication Part VII. Forms

CHAPTER 1 Declarations and Filings by Inventor and on Behalf of Inventor

CHAPTER 2 Filings by a Person Authorized by Applicant

CHAPTER 3 Designs

CHAPTER 4 Transmittals of Patent Applications

CHAPTER 5 Completion of Filing Requirements

CHAPTER 6 Duty of Candor and Information Disclosure Statement

CHAPTER 7 Small Entities

CHAPTER 8 Certificate Of Mailing, Express Mail and Facsimile Transmissions

CHAPTER 9 Matters During Prosecution of the Patent Application

CHAPTER 10 Matters After Allowance and After Payment of Issue Fee

CHAPTER 11 Extensions of Time and Petitions for Revival of Patent

CHAPTER 12 Powers of Attorney and Correspondence Address

CHAPTER 13 PCT International Application and U.S. National Processing

CHAPTER 14 Matters After Patent Grant

CHAPTER 15 Appeals to the CAFC

CHAPTER 16 Assignments

CHAPTER 17 Reissue

CHAPTER 18 Reexamination

CHAPTER 19 Miscellaneous Forms

CHAPTER 20 Fees

CHAPTER 21 Maintenance Fees

CHAPTER 22 Licenses for Foreign Filing

CHAPTER 23 Provisional Applications

CHAPTER 24 European Patent Office

CHAPTER 25 Publication

CHAPTER 26 Electronic Business Center

CHAPTER 27 Interferences

Lester Horwitz has been in practice as a patent attorney for over 40 years, representing clients before the U.S. PTO, acting on their behalf in securing protection in foreign patent offices and in licensing and enforcing their intellectual property.

Mr. Horwitz has extensively written on intellectual property issues and has lectured before U.S. and foreign patent law associations and, on invitation, to foreign patent office personnel.

His education includes a Ph. D. from New York University and an LL. B. from the University of Missouri.

He speaks from experience as both a patent attorney and as an inventor who has patents on his own research.