CHAPTER 11 Outline

• Jurisdiction: United States

CHAPTER 11

Patent Prosecution Procedures in the U.S. Patent and Trademark Office

§11.01 Introduction

§11.02 Filing the Patent Application

[A] Non-Provisional/Regular Application

[B] Provisional Application

[C] Incorporation by Reference

§11.03 Examination by the USPTO

[A] Overview

[B] Search of Prior Art

[C] First Office Action

[D] Applicant's Response

[E] Second or Final Office Action

[F] Requests for Continued Examination

[G] Continuing Applications

§11.04 Patent Issuance

§11.05 Patent Term Adjustment

[A] Generally

[B] Overlap Limitation

[C] Treatment of Continued Examination

[D] What Constitutes USPTO Fault for A-Type Delay

§11.06 Publication of Pending Nonprovisional Applications

§11.07 Continuing Application Practice

[A] Introduction

[B] Three Types of Continuing Applications

[C] Filing Requirements

[D] Effective Filing Date of Claims in Continuing Applications

[E] Patent Term of Continuing Applications

[F] Divisional Applications

[1] Restriction Requirements

[2] Consonance Requirement

§11.08 Claiming Foreign Priority

[A] Treaty Basis and Statutory Implementation

[B] "Shall Have the Same Effect"

[C] "Same Invention"

[D] Formal Requirements

[E] First-Filed Foreign Applications

§11.09 Appeals to the...