Docket No. 1004294.012US
`
`85775
`
`tCUSTOMER NUMBERt
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`UTILITY APPLICATION AND FEE TRANSMITTAL (1.53(B))
`
`Mail Stop
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`Transmitted herewith for filing is the patent application of
`
`Inventor(s) names and addresses:
`
`Scott McNulty
`22 Ensign Road
`Rowayton, CT 06853
`
`(1)
`
`(2)
`
`Additional inventors are listed on a separate sheet
`
`For:
`
`APPARATUS, METHOD AND SYSTEM FOR A TUNNELING CLIENT ACCESS POINT
`
`Enclosed Are:
`
`tsi
`
`Application
`
`66
`2
`8
`10
`
`page(s) of specification
`page(s) of Abstract
`page(s) of claims
`sheets of
`
`q Formal
`
`Declaration and Power of Attorney
`
`Informal drawings
`
`q Unsigned
`q Newly Executed
`El Copy from prior application
`q Deletion of inventors including Signed Statement under 37 C.F.R. §1.63(d)(2)
`
`q
`
`REQUEST AND CERTIFICATION UNDER 35 U.S.C. §122(b)(2)(B)(i) (form PTO/SB/35)
`As indicated on the attached Request and Certification, Applicant(s) certify that the invention disclosed in
`the attached application HAS NOT and WILL NOT be the subject of an application filed in another
`country, or under a multilateral agreement, that requires publication at eighteen months after filing.
`Applicant(s) therefore request(s) that the attached application NOT be published under 35 U.S.C. §122(b).
`
`Incorporation by Reference:
`q The entire disclosure of the prior application, from which a copy of the combined Declaration and
`Power of Attorney is supplied herein, is considered as being part of the disclosure of the
`accompanying application and is incorporated herein by reference.
`
`635051 v.1
`
`PayPal Ex. 1016, p. 1
`PayPal v. IOENGINE
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`

`

`Docket No. 1004294.012US
`
`Deletion of Inventors (37 C.F.R. §1.63(d) and §1.33(b)
`
`Signed statement attached deleting inventor(s) named in the prior application serial no.
`
`, filed
`
`Microfiche Computer Program (Appendix)
`
`q page(s) of Sequence Listing
`q computer readable disk containing Sequence Listing
`q Statement under 37 C.F.R. §1.821(f) that computer and paper copies of the Sequence Listing are the
`same
`
`Assignment Papers (assignment cover sheet and assignment documents)
`q A check in the amount of $40.00 for recording the Assignment
`q Charge the Assignment Recordation Fee to Deposit Account No. 504827, Order No.
`q Assignment Papers filed in the parent application Serial No.
`
`E
`
`Certification of chain of title pursuant to 37 C.F.R. §3.73(b)
`
`q
`
`Priority is claimed under 35 U.S.C. §119 for:
`Application No(s).
` , filed
`, in
`
`(country).
`
`q Certified Copy of Priority Document(s) [
`q filed herewith
`q filed in application Serial No.
`q English translation document(s) [
`q filed herewith
`q filed in application Serial No.
`
`Priority is claimed under 35 U.S.C. §119(e) for:
`Provisional Application No.
`, filed
`
`Information Disclosure Statement
`
`filed
`
`, filed
`
`[
`
`1 cited rcfcrc,nces
`q PTO Form-1449
`q References cited in parent application Serial No.
`
`, filed
`
`Related Case Statement under 37 C.F.R. §1.98(a)(2)(iii)
`
`, filed
`
`, respectively, is
`
`A copy of related pending U.S. Application(s) Serial No(s):
`attached hereto.
`q A copy of related pending U.S. Application(s) entitled,
`respectively, is attached hereto.
`q A copy of each related application(s) was submitted in parent application serial no.
`
`q
`
`Preliminary Amendment
`
`Return receipt postcard (MPEP 503)
`
`635051v.1
`
`-2-
`
`, filed
`
` to inventor(s)
`
`, filed
`
`PayPal Ex. 1016, p. 2
`PayPal v. IOENGINE
`
`

`

`Docket No. 1004294.012US
`
`This is a Z continuation El divisional E] continuation-in-part of prior application serial no. 10/807,731,
`filed March 23 2004, to which priority under 35 U.S.C. §120 is claimed.
`
`of the parent application before calculating the filing
`11] Cancel in this application original claims
`fee. (At least one original independent claim must be retained for filing purposes.)
`El A Preliminary Amendment is enclosed. (Claims added by this Amendment have been properly
`numbered consecutively beginning with the number following the highest numbered original claim in
`the prior application).
`
`The status of the parent application is as follows:
`
`1=1 A Petition for Extension of Time and a Fee therefor has been or is being filed in the parent application
`to extend the term for action in the parent application until
`
`q A copy of the Petition for Extension of Time in the co-pending parent application is attached.
`
`Z No Petition for Extension of Time and Fee are necessary in the co-pending parent application.
`
`1=1
`
`1=1
`El
`
`Please abandon the parent application at a time while the parent application is pending or at a time when
`the petition for extension of time in that application is granted and while this application is pending has
`been granted a filing date, so as to make this application co-pending.
`
`Transfer the drawing(s) from the parent application to this application
`
`Amend the specification by inserting before the first line the sentence:
`This is Z continuation 1=I divisional El continuation-in-part of co-pending application Serial No.
`10/807,731, filed March 23, 2004.
`
`I. CALCULATION OF APPLICATION FEE
`Basic Fee ($330/$165)
`Electronic Filing Only: Basic Fee for Small Entity ($82)
`
`Examination Fee ($220/$110)
`
`Search Fee ($540/$270)
`
`'''
`Total Claims
`
`Number Filed
`37 - 20 =
`
`Number Extra
`17 x
`
`Independent Claims
`
`5 - 3 =
`
`2 x
`
`Rate
`
`($52/$26)
`
`($220/$110)
`
`$ 82.00
`
`$ 110.00
`$ 270.00
`
`$ 442.00
`
`$ 220.00
`
`$ 0
`
`Fee
`
`($270/$135)
`TOTAL:
`
`$ 0
`$ 1,124.00
`
`If marked, add fee of $390/$195
`0 Multiple Dependent Claims
`Extra Sheets Number of each additional 50 or fraction thereof
`(round up to the whole number)
`
`76- 100 =
`
`/ 50 =
`
`Total Sheets
`
`Small entity status is or has been claimed. Reduced fees under 37 C.F.R. §1.9 (f) paid herewith
`$1,124.00.
`
`Charge fee to Deposit Account No. 504827, Order No. 1004294.012US.
`
`635051v.1
`
`-3-
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`PayPal Ex. 1016, p. 3
`PayPal v. IOENGINE
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`

`

`❑x
`
`The Commissioner is hereby authorized to charge any additional fees which may be required for filing this
`application pursuant to 37 CFR §1.16, including all extension of time fees pursuant to 37 C.F.R. § 1.17
`for maintaining copendency with the parent application, or credit any overpayment to Deposit Account
`No. 504827, Order No. 1004294.012US.
`
`Docket No. 1004294.012US
`
`Respectfully submitted,
`LOCKE LORD BISSELL & LIDDELL LLP
`fr .
`
`Robert K. oethat
`Registration No. 36 813
`
`Dated: November 19, 2010
`
`Correspondence Address:
`Address Associated With Customer Number:
`85775
`
`(212) 415-8600
`(212) 303-2754
`
`Telephone
`Facsimile
`
`635051v.1
`
`-4-
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`PayPal Ex. 1016, p. 4
`PayPal v. IOENGINE
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`

`

`Docket No. 4602-4001
`
`COMBINED DECLARATION AND POWER OF ATTORNEY FOR
`ORIGINAL, DESIGN, NATIONAL STAGE OF PCT, SUPPLEMENTAL,
`DIVISIONAL, CONTINUATION OR CONTINUATION-IN-PART APPLICATION
`
`s a below named inventor, 1 hereby declare that:
`
`My residence, post office address and citizenship are as stated below next to my name,
`
`I believe I am the original, first and sole inventor (if only one name is listed below) or an original, first
`and joint inventor (if plural names are listed below) of the subject matter which is claimed and for which
`a patent is sought on the invention entitled:
`
`Apparatus, Method and System For A Tunneling Client Access Point
`
`the specification of which
`
`a.
`
`q
`
`is attached hereto
`
`b. Z
`
`was filed on March 23, 2004 as application Serial No. 10/807,731 and was amended on
`. (if applicable).
`
`PCT FILED APPLICATION ENTERING NATIONAL STAGE
`
`c.
`
`q
`
`was described and claimed in International Application No.
`. (if any).
`as amended on
`
`filed on
`
`and
`
`I hereby state that I have reviewed and understand the contents of the above-identified specification,
`including the claims, as amended by any amendment referred to above.
`
`I acknowledge the duty to disclose information which is material to patentability as defined in 37 C.F.R.
`§ 1.56.
`
`I hereby specify the following as the correspondence address to which all communications about this
`application are to be directed:
`
`SEND CORRESPONDENCE TO:
`Bar Code label attached (see right)
`Z
`
`q Address Shown (see below)
`
`MORGAN & FINNEGAN, L.L.P.
`345 Park Avenue
`New York, N.Y. 10154
`DIRECT TELEPHONE CALLS TO:
`
`820558 vl
`
`27123
`
`tCUSTOMER NUMBERt
`
`PayPal Ex. 1016, p. 5
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`

`

`q
`
`I hereby claim foreign priority benefits under Title 35, United States Code § 119 (a)-(d) or under
`§ 365(b) of any foreign application(s) for patent or inventor's certificate or under § 365(a) of any
`PCT international application(s) designating at least one country other than the U.S. listed below
`and also have identified below such foreign application(s) for patent or inventor's certificate or
`such PCT international application(s) filed by me on the same subject matter having a filing date
`within twelve (12) months before that of the application on which priority is claimed:
`
`Docket No. 4602-4001
`
`q The attached 35 U.S.C. § 119 claim for priority for the application(s) listed below forms a part of
`this declaration.
`
`Country/PCT
`
`Application
`Number
`
`Date of filing
`(day, month, yr)
`
`Date of issue
`(day, month, yr)
`
`Priority
`Claimed
`
`❑Y ❑N
`
`❑Y ❑N
`
`[j] Y ❑N
`
`q
`
`I hereby claim the benefit under 35 U.S.C. § 119(e) of any U.S. provisional application(s) listed
`below.
`
`Provisional Application No.
`
`Date of filing (day, month, yr)
`
`ADDITIONAL STATEMENTS FOR DIVISIONAL,
`CONTINUATION OR CONTINUATION-IN-PART
`OR PCT APPLICATION(S) DESIGNATING THE U.S.
`
`I hereby claim the benefit under Title 35, United States Code § 120 of any United States application(s) or
`.under § 365(c) of any PCT international application(s) designating the U.S. listed below.
`
`US/PCT Application Serial No.
`
`Filing Date
`
`Status (patented, pending, abandoned)/ U.S.
`application no. assigned (For PCT)
`
`US/PCT Application Serial No.
`
`Filing Date
`
`Status (patented, pending, abandoned)/ U.S.
`application no. assigned (For PCT)
`
`q In this continuation-in-part application, insofar as the subject matter of any of the claims of this
`application is not disclosed in the above listed prior United States or PCT international
`application(s) in the manner provided by the first paragraph of Title 35, United States Code, §
`112, I acknowledge the duty to disclose material information as defined in Title 37, Code of
`Federal Regulations, § 1.56(a) which occurred between the filing date of the prior application(s)
`and the national or PCT international filing date of this application.
`
`820558 v I
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`-2-
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`PayPal Ex. 1016, p. 6
`PayPal v. IOENGINE
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`

`

`Docket No. 4602-4001
`
`I hereby declare that all statements made herein of my own knowledge are true and that all statements
`made on information and belief are believed to be true; and further that these statements were made with
`the knowledge that willful false statements and the like so made are punishable by fine or Imprisonment,
`or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements
`may jeopardize the validity of the application or any patent issued thereon.
`I hereby appoint the following attorneys and/or agents with full power of substitution and revocation, to
`prosecute this application, to receive the patent, and to transact all business in the Patent and Trademark
`Office connected therewith: David H. Pfeffer (Reg. No. 19,825), Harry C. Marcus (Reg. No. 22,390),
`Stephen R. Smith (Reg. No. 22,615), Kurt E. Richter (Reg. No. 24,052), Eugene Moroz (Reg. No.
`25,237), John F. Sweeney (Reg. No. 27,471), Arnold I. Rady (Reg. No. 26,601), Christopher A. Hughes
`(Reg. No. 26,914), William S. Feiler (Reg. No. 26,728), Joseph A. Calvaruso (Reg. No. 28,287), James
`W. Gould (Reg. No. 28,859), Richard C. Komson (Reg. No. 27,913), Israel Blum (Reg. No. 26,710),
`Bartholomew Verdirame (Reg. No. 28,483), Maria C.H. Lin (Reg. No. 29,323), Joseph A. DeGirolamo
`(Reg. No. 28,595), Michael P. Dougherty (Reg. No. 32,730), Seth J. Atlas (Reg. No. 32,454), Andrew M.
`Riddles (Reg. No. 31,657), Bruce D. DeRenzi (Reg. No. 33,676), Mark J. Abate (Reg. No. 32,527), John
`T. Gallagher (Reg. No. 35,516), Steven F. Meyer (Reg. No. 35,613), Kenneth H. Sonnenfeld (Reg. No.
`33,285), Tony V. Pezzano (Reg. No. 38,271), Andrea L. Wayda (Reg. 43,979), Walter G. Hanchuk (Reg.
`No. 35,179), John W. Osborne (Reg. No. 36,231), Robert K. Goethals (Reg. No. 36,813), Peter N. Fill
`(Reg. No. 38,876), Kenneth S. Weitzman (Reg. No. 36,306), Richard Straussman (Reg. No. 39,847),
`Stephen J. Manetta (Reg. No. 40,426), Dorothy R. Auth (Reg. No. 36,434) and Michael 0. Cummings,
`(Reg. No. 40,575) of Morgan & Finnegan, L.L.P. whose address is: 345 Park Avenue, New York, New
`York, 10154; and Michael S. Marcus (Reg. No. 31,727), and John E. Hoel (Reg. No. 26,279), of
`Morgan & Finnegan, L.L.P., whose address is 1775 Eye Street, Suite 400, Washington, D.C. 20006.
`
`I hereby authorize the U.S. attorneys and/or agents named hereinabove to accept and follow
`as to any action to be taken in the U.S. Patent and Trademark Office
`instructions from
`regarding this application without direct communication between the U.S. attorneys and/or agents
`and me. In the event of a change in the person(s) from whom instructions may be taken I will so
`notify the U.S. attorneys and/or agents named hereinabove.
`
`Full name of sole or first inventor: 1cott McNulty
`
`Inventor's signature*
`
`
`
`4
`
`0 1
`
`6/
`
`Residence:
`
`Citizenship:
`
`22 Ensign Road, Rowa ton, CT 06853
`
`USA
`
`Post Office Address:
`
`Same as above
`
`7-/t-oy
`Date
`
`Full name of second inventor:
`
`Inventor's signature*
`
`
`
`Residence:
`
`Citizenship:
`
`Post Office Address:
`
`Date
`
`ATTACHED IS ADDED PAGE TO COMBINED DECLARATION AND POWER OF ATTORNEY FOR
`SIGNATURE BY THIRD AND SUBSEQUENT INVENTORS FORM.
`
`820558 vl
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`Docket No. 4602-4001
`
`*Before signing this declaration, each person signing must:
`
`1. Review the declaration and verify the correctness of all information therein; and
`
`2. Review the specification and the claims, including any amendments made to the claim
`
`After the declaration is signed, the specification and claims are not to be altered.
`
`To the inventor(s):
`
`The following are cited in or pertinent to the declaration attached to the accompanying
`application:
`
`Title 37, Code of Federal Regulation, §1.56
`
`Duty to disclose information material to patentability
`
`(a)
`
`A patent by its very nature is affected with a public interest. The public interest is best served, and the most
`effective patent examination occurs when, at the time an application is being examined, the Office is aware
`of and evaluates the teachings of all information material to patentability. Each individual associated with
`the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the
`Office, which includes a duty to disclose to the Office all information known to that individual to be
`material to patentability as defined in this section. The duty to disclose information exists with respect to
`each pending claim until the claim is cancelled or withdrawn from consideration, or the application
`becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn
`from consideration need not be submitted if the information is not material to the patentability of any claim
`remaining under consideration in the application. There is no duty to submit information which is not
`material to the patentability of any existing claim. The duty to disclose all information known to be
`material to patentability is deemed to be satisfied if all information known to be material to patentability of
`any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by
`§§ 1.97(b)-(d) patentability of any existing claim. The duty to disclose all information known to be material
`to patentability is deemed to be satisfied if all information known to be material to patentability of any
`claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§
`1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud
`on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or
`intentional misconduct. The Office encourages applicants to carefully examine:
`
`(1)
`
`(2)
`
`prior art cited in search reports of a foreign patent office in a counterpart application, and
`
`the closest information over which individuals associated with the filing or prosecution of a patent
`application believe any pending claim patentably defines, to make sure that any material
`information contained therein is disclosed to the Office.
`
`(b)
`
`Under this section, information is material to patentability when it is not cumulative to information already
`of record or being made of record in the application, and
`
`(1)
`
`It establishes, by itself or in combination with other information, a prima facie case of
`unpatentability of a claim; or
`
`(2)
`
`It refutes, or is inconsistent with, a position the applicant takes in:
`
`820558 vl
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`Docket No. 4602-4001
`
`(i)
`
`Opposing an argument of unpatentability relied on by the Office, or
`
`(ii)
`
`Asserting an argument of patentability. A prima facie case of unpatentability is
`established when the information compels a conclusion that a claim is
`unpatentable under the preponderance of evidence, burden-of-proof standard,
`giving each term in the claim its broadest reasonable construction consistent
`with the specification, and before any consideration is given to evidence which
`may be submitted in an attempt to establish a contrary conclusion of
`patentability.
`Individuals associated with the filing or prosecution of a patent application within the meaning of this
`section are:
`
`(1)
`
`(2)
`
`(3)
`
`Each inventor named in the application;
`
`Each attorney or agent who prepares or prosecutes the application; and
`
`Every other person who is substantively involved in the preparation or prosecution of the
`application and who is associated with the inventor, with the assignee or with anyone to whom
`there is an obligation to assign the application.
`
`Individuals other than the attorney, agent or inventor may comply with this section by disclosing
`information to the attorney, agent, or inventor.
`
`In any continuation-in-part application, the duty under this section includes the duty to disclose to the
`Office all information known to the person to be material to patentability, as defined in paragraph (b) of
`this section, which became available between the filing date of the prior application and the National or
`PCT international filing date of the continuation-in-part application.
`
`(c)
`
`(d)
`
`(e)
`
`Title 35, U.S. Code § 101
`
`Inventions patentable
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.
`
`Title 35 U.S. Code § 102
`
`Conditions for patentability; novelty and loss of right to patent
`
`A person shall be entitled to a patent unless --
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`the invention was known or used by others in this country, or patented or described in a printed publication
`in this or a foreign country, before the invention thereof by the applicant for patent,
`
`the invention was patented or described in a printed publication in this or foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States, or
`
`he has abandoned the invention, or
`
`the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by
`the applicant or his legal representatives or assigns in a foreign country prior to the date of the application
`for patent in this country on an application for patent or inventor's certificate filed more than twelve months
`before the filing of the application in the United States, or
`
`820558 vl
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`PayPal Ex. 1016, p. 9
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`Docket No. 4602-4001
`
`(e)
`
`The invention was described in--
`
`(1)
`
`(2)
`
`an application for patent, published under section 122(b), by another filed in the United States
`before the invention by the applicant for patent, except that an international application filed under
`the treaty defined in section 351(a) shall have the effect under this subsection of a national
`application published under section 122(b) only if the international application designating the
`United States was published under Article 21(2)(a) of such treaty in the English language; or
`
`a patent granted on an application for patent by another filed in the United States before the
`invention by the applicant for patent, except that a patent shall not be deemed filed in the United
`States for the purposes of this subsection based on the filing of an international application filed
`under the treaty defined in section 351(a); or
`
`(f)
`
`(g)
`
`he did not himself invent the subject matter sought to be patented, or
`
`(1) during the course of an interference conducted under section 135 or section 291, another inventor
`involved therein establishes, to the extent permitted in section 104, that before such person's invention
`thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2)
`before such person's invention thereof, the invention was made in this country by another inventor who had
`not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there
`shall be considered not only the respective dates of conception and reduction to practice of the invention,
`but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time
`prior to conception by the other.
`
`Title 35, U.S. Code § 103
`
`103. Conditions for patentability; non-obvious subject matter
`
`(a)
`
`(b)
`
`A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be
`negatived by the manner in which the invention was made.
`
`(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under
`this subsection, a biotechnological process using or resulting in a composition of matter that is novel under
`section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if—
`
`(A)
`
`(B)
`
`claims to the process and the composition of matter are contained in either the same
`application for patent or in separate applications having the same effective filing date;
`and
`
`the composition of matter, and the process at the time it was invented, were owned by the
`same person or subject to an obligation of assignment to the same person.
`
`(2)
`
`A patent issued on a process under paragraph (1)—
`
`(A)
`
`(B)
`
`shall also contain the claims to the composition of matter used in or made by that process,
`OT
`
`shall, if such composition of matter is claimed in another patent, be set to expire on the
`same date as such other patent, notwithstanding section 154.
`
`(3)
`
`For purposes of paragraph (1), the term "biotechnological process" means--
`
`820558 v1
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`

`Docket No. 4602-4001
`
`(A)
`
`a process of genetically altering or otherwise inducing a single- ormulti-celled organism
`to--
`
`(i)
`
`(ii)
`
`express an exogenous nucleotide sequence,
`
`inhibit, eliminate, augment, or alter expression of an endogenous nucleotide
`sequence, or
`
`(iii)
`
`express a specific physiological characteristic not naturally associated with said
`organism;
`cell fusion procedures yielding a cell line that expresses a specific protein, such as a
`monoclonal antibody; and
`
`a method of using a product produced by a process defined by subparagraph (A) or (B),
`or a combination of subparagraphs (A) and (B).
`
`(B)
`
`(C)
`
`(c)
`
`Subject matter developed by another person, which qualifies as prior art only under one or more of
`subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section
`where the subject matter and the claimed invention were, at the time the invention was made, owned by the
`same person or subject to an obligation of assignment to the same person.
`
`Title 35, U.S. Code § 112 (in part)
`
`Specification
`
`The specification shall contain a written description of the invention, and of the manner and process of making and
`using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or
`with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by
`the inventor of carrying out his invention.
`
`Title 35, U.S. Code, § 119
`
`Benefit of earlier. iling date in foreign country; right of priority
`
`(a)
`
`(b)
`
`An application for patent for an invention filed in this country by any person who has, or whose legal
`representatives or assigns have, previously regularly filed an application for a patent for the same invention
`in a foreign country which affords similar privileges in the case of applications filed in the United States or
`to citizens of the United States, or in a WTO member country, shall have the same effect as the same
`application would have if filed in this country on the date on which the application for patent for the same
`invention was first filed in such foreign country, if the application in this country is filed within twelve
`months from the earliest date on which such foreign application was filed; but no patent shall be granted on
`any application for patent for an invention which had been patented or described in a printed publication in
`any country more than one year before the date of the actual filing of the application in this country, or
`which had been in public use or on sale in this country more than one year prior to such filing.
`
`(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and
`Trademark Office, identifying the foreign application by specifying the application number on that foreign
`application, the intellectual property authority or country in or for which the application was filed, and the
`date of filing the application, at such time during the pendency of the application as required by the
`Director.
`
`(2)
`
`The Director may consider the failure of the applicant to file a timely claim for priority as a
`waiver of any such claim. The Director may establish procedures, including the payment of a
`surcharge, to accept an unintentionally delayed claim under this section.
`
`820558 v I
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`-iv-
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`PayPal Ex. 1016, p. 11
`PayPal v. IOENGINE
`
`

`

`(c)
`
`(d)
`
`(e)
`
`Docket No. 4602-4001
`
`(3)
`
`The Director may require a certified copy of the original foreign application, specification, and
`drawings upon which it is based, a translation if not in the English language, and such other
`information as the Director considers necessary. Any such certification shall be made by the
`foreign intellectual property authority in which the foreign application was filed and show the
`date of the application and of the filing of the specification and other papers.
`In like manner and subject to the same conditions and requirements, the right provided in this section may
`be based upon a subsequent regularly filed application in the same foreign country instead of the first filed
`foreign application, provided that any foreign application filed prior to such subsequent application has
`been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection
`and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for
`claiming a right of priority.
`
`Applications for inventors' certificates filed in a foreign country in which applicants have a right to apply,
`at their discretion, either for a patent or for an inventor's certificate shall be treated in this country in the
`same manner and have the same effect for purpose of the right of priority under this section as applications
`for patents, subject to the same conditions and requirements of this section as apply to applications for
`patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris
`Convention at the time of such filing.
`
`(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed
`in the manner provided by the first paragraph of section 112 of this title in a provisional application filed
`under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall
`have the same effect, as to such invention, as though filed on the date of the provisional application filed
`under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of
`this title is filed not later than 12 months after the date on which the provisional application was filed and if
`it contains or is amended to contain a specific reference to the provisional application. No application shall
`be entitled to the benefit of an earlier filed provisional application under this subsection unless an
`amendment containing the specific reference to the earlier filed provisional application is submitted at such
`time during the pendency of the application as required by the Director. The Director may consider the
`failure to submit such an amendment within that time period as a waiver of any benefit under this
`subsection. The Director may establish procedures, including the payment of a surcharge, to accept an
`unintentionally delayed submission of an amendment under this subsection during the pendency of the
`application.
`
`(2)
`
`(3)
`
`A provisional application filed under section 111(b) of this title may not be relied upon in any
`proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C)
`of section 41(a)(1) of this title has been paid.
`
`If the day that is 12 months after the filing date of a provisional application falls on a Saturday,
`Sunday, or Federal holiday within the District of Columbia, the period of pendency of the
`provisional application shall be extended to the next succeeding secular or business day.
`
`Applications for plant breeder's rights filed in a WTO member country (or in a foreign UPOV Contracting
`Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of
`this section as applications for patents, subject to the same conditions and requirements of this section as
`apply to applications for patents.
`
`(g)
`
`As used in this section--
`
`(1)
`
`(2)
`
`the term "WTO member country" has the same meaning as the term is defined in section 104(b)(2)
`of this title; and
`
`the term "UPOV Contracting Party" means a member of the International Convention for the
`Protection of New Varieties of Plants.
`
`.820558 vl
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`-v-
`
`PayPal Ex. 1016, p. 12
`PayPal v. IOENGINE
`
`

`

`Docket No. 4602-4001
`
`Title 35, U.S. Code, § 120
`
`Benefit or earlier filing date in the United States
`
`An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of
`this title in an application previously filed in the United States, or as provided by section 363 of this title, which is
`filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such
`invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or
`termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing
`date of the first application and if it contains or is amended to contain a specific reference to the earlier filed
`application. No application shall be entitled to the benefit of an earlier. filed application under this section unless
`an amendment