Patent Education Series Members-Only Course

You are here: Ed9 10.2019 Guidebook » Chapter 600

Chapter 600: Parts, Form and Content of Application

Summary

Rankings

Frequency

Training

Mind Map

Objectives

Key Terms

Summary:

Chapter 600 explicitly describes the contents required for filing an application and gaining a filing date. Detailed descriptions and guidelines for the oath/declaration, the disclosure and the drawings are summarized.

Claims are a major part of an application and must be written correctly. This chapter provides a complete outline of the rules involved with writing claims and provides several examples of properly written claims.

An applicant may submit a list of prior art references disclosing subject matter that is similar to the invention they are attempting to patent. This may aid the PTO and the applicant by helping them to shape better claims. The time periods and regulations for submitting an IDS are incredibly complicated and are presented in this chapter as well.

This chapter is heavily tested. There are always a few questions on the contents of provisional and nonprovisional applications in addition to topics relating to the oath/declaration.

Claims are one of the most frequently tested areas of the patent bar exam. Several years ago, the PTO had a p.m. essay section which focused entirely on claims. As you can probably imagine, now that the test is all multiple choice, the PTO still incorporates many questions related to claims. Some of the claim questions will refer to the wording required to make a proper claim while other questions will be more general. The most difficult questions relate to the logic of a set of claims. Fortunately, there are usually only one of these per every 50 questions.

A few additional questions will relate to information disclosure statements (IDS’s) and the complex rules associated with their submittal to the PTO.

Chapter Ranking Chart:

Importance Ranking:

5-Stars

Volume of Material:

5-Stars

Complexity:

4-Stars

Overall Score:

4.7

MPEP Section Frequency:

Key

22 Questions

Patent Training Workshop Videos:

Contents Overview
Oath/Declaration
IDS
Specification
Title/Abstract
Background
Brief Description
Claims
Drawings
Other Considerations

Mindmap:

Click on image to see full-size view or download the mindmap PDF.
Download the PDF outline.

Objectives

Know the required contents for both provisional and nonprovisional
applications.
Learn the details of oaths/declarations, especially those who may sign
them.
Claims are very important, therefore, you should know: the wording required to make a proper claim, general details about multiple dependent claims, dependent claims and independent claims, the fee schedule for claims, and how to amend claims.
Know all about IDS’s, especially when they may be submitted and what will
be required for their submittal.
Know the following laws and rules:

37 C.F.R. 1.26	Refunds.
37 C.F.R 1.51	General requisites of an application.
37 C.F.R 1.52	Language, paper, writing, margins, compact disc specifications.
37 C.F.R 1.53	Application number, filing date, and completion of application.
37 C.F.R 1.63	Oath or declaration.
37 C.F.R 1.67	Supplemental oath or declaration.
37 C.F.R 1.71	Detailed description and specification of the invention.
37 C.F.R 1.72	Title and abstract.
37 C.F.R 1.73	Summary of the invention.
37 C.F.R 1.74	Reference to drawings.
37 C.F.R 1.75	Claim(s).
37 C.F.R 1.76	Application data sheet.
37 C.F.R 1.77	Arrangement of application elements.
37 C.F.R 1.81	Drawings required in patent application.
37 C.F.R 1.84	Standards for drawings.
37 C.F.R 1.91	Models or exhibits not generally admitted as part of application or patent.
37 C.F.R 1.93	Specimens.
37 C.F.R 1.97	Filing of information disclosure statement.
37 C.F.R 1.98	Content of information disclosure statement.
37 C.F.R 1.115	Preliminary amendments.
37 C.F.R 1.126	Numbering of claims.
37 C.F.R 1.183	Suspension of rules.
35 U.S.C. 111	Application.
35 U.S.C. 112	Specification.
35 U.S.C. 113	Drawings.

Key Terms