This chapter discusses several miscellaneous topics
such as the restrictions placed on former examiners aiding in the writing or prosecution
of a patent application.
It also outlines the operation of the Official
Gazette, including when it is published and the details of its contents.
Disclosure
documents are also discussed. These provide a means for an inventor to establish
evidence for the date of the conception of the invention before filing a patent
application. The U.S.Philippines search engine is also touched upon briefly.
If anything from this chapter is on the patent bar exam at all, in all likelihood,
it will pertain to disclosure documents and even less likely, the restrictions
placed on former examiners.
1702 Restrictions on former examiners
§ 10.10 Restrictions on practice in patent cases.
(a)
Only practitioners who are registered under § 10.6 or individuals given limited
recognition under § 10.9 will be permitted to prosecute patent applications
of others before the Office.
(b) No individual who has served in the patent
examining corps of the Office may practice before the Office after termination
of his or her service, unless he or she signs a written undertaking,
(1) Not
to prosecute or aid in any manner in the prosecution of any patent application
pending in any patent examining group during his or her period of service therein
and
(2) Not to prepare or prosecute or to assist in any manner in the preparation
or prosecution of any patent application of another (i) assigned to such group
for examination and (ii) filed within two years after the date he or she left
such group, without written authorization of the Director. Associated and related
classes in other patent examining groups may be required to be included in the
undertaking or designated classes may be excluded from the undertaking. When an
application for registration is made after resignation from the Office, the applicant
will not be registered if he or she has prepared or prosecuted or assisted in
the preparation or prosecution of any patent application as indicated in the paragraph.
Knowingly preparing or prosecuting or providing assistance in the preparation
or prosecution of any patent application contrary to the provisions of this paragraph
shall constitute misconduct under § 10.23(c)(13) of this part.
(c) A practitioner
who is an employee of the Office cannot prosecute or aid in any manner in the
prosecution of any patent application before the Office.
(d) Practice before
the Office by Government employees is subject to any applicable conflict of interest
laws, regulations or codes of professional responsibility.
employees
of the PTO may not prepare, prosecute or even aid in the prosecution of any patent
application during their employment and for an additional two years afterward
prosecution
of any patent application before this 2 year period by a previous patent examiner
must be cleared by the PTO
1703 The Official Gazette
The Official
Gazette provides a weekly report of all the reexamination certificates, reissues,
plant patents, utility patents, design patents, statutory invention registrations
and other important information published that week.
the Official Gazette
prints the following information for each patent it lists:
applicant's name
applicant's city and state of residence or Post Office address, if unassigned,
or if assigned, the assignee's name, city and state of residence, and Post Office
address
filing date
application number
patent number
title of the
invention
number of claims
U.S. classification by class and subclass
a
selected figure of the drawing, if any, except in the case of a plant patent
a claim or claims
any international classification
U.S. parent application
data, if any
foreign priority application date, if any
for reissue patents:
the original patent number and issue date, and the original application number
and filing date
1706 Disclosure Documents
the PTO will accept
and preserve "Disclosure Documents" for two years as evidence of the
date of conception of an invention
"Disclosure Documents" should
include:
a paper disclosing the invention with the inventor(s) signature
the
document should be forwarded to the PTO by the inventor, owner of the invention
or attorney or agent
it should include a clear explanation of the manner and
process of the invention in enough detail for a person skilled in the art to be
able to make and use the invention
the Disclosure Document will be kept on
file for two years and then destroyed unless it is referred to in a separate letter
in a related patent application filed within those two years
a Disclosure
Document is not a patent application, the date of its receipt at the PTO will
not become the filing date of any patent application disclosing the same material
Disclosure
Documents:
will be kept in confidence
may be relied upon only as evidence
of the conception of the invention
a patent application should be filed immediately
if protection is desired
the two year period is not a "grace period",
an inventor may lose all benefits by waiting
to establish priority of an
invention, the inventor may have to establish diligence in completing the invention
or in filing the patent application
if public use, sale or publication of the
invention occurs more than one year prior to the filing of the patent application,
it will still bar a patent from issuing regardless of the filing of a Disclosure
Document
an overview of the Document Disclosure program:
it is a document
that an inventor can submit with a separate cover sheet and paper describing the
invention
the document will be retained for two years
the document can serve
as proof of the conception of the invention
it is legally given no more weight
other than proof of conception, it will not hold a filing date or protect the
invention
1711 U.S. - Philippines search engine
This search
engine was set up to facilitate the handling of applications with US. origin filed
in the Philippines resulting in a savings in time and expense ofprosecution to
US. applicants.