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					                    Biotech Partnership Meeting
                         December 8, 2004



               Significant Final Rule Makings of 2004




Bob Spar, Director
Office of Patent Legal Administration (OPLA)
 (571) 272-7700
Deputy Commissioner for Patent Examination Policy
(DCPEP)
PatentPractice@uspto.gov
                          Final Rule Makings

                   I.     Changes to Support Implementation of the USPTO
                          21St Century Strategic Plan, Final Rule, 69 Fed. Reg.
                          56481 (September 21, 2004), 1287 Off. Gaz. Pat.
                          Office 67 (October 12, 2004).
                   II.    Rules of Practice before the Board of Patent Appeals
                          and Interferences, Final Rule, 69 Fed. Reg. 49959
                          (August 12, 2004), 1286 Off. Gaz. Pat. Office 204
                          (September 7, 2004).
                   III.   Revision of Power of Attorney and Assignment
                          Practice, Final Rule, 69 Fed. Reg. 29865 (May 26,
                          2004), 1283 Off. Gaz. Pat. Office 148 (June 22,
                          2004).

December 8, 2004                                                                  2
                   Final Rules, Federal Register Notices, and Official Gazette
                   Notices are available on the USPTO web site at:
                   http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html




December 8, 2004                                                                 3
                    I.   Changes to Support Implementation of
                         the USPTO 21st Century Strategic Plan


               Changes to Support Implementation of the United States
               Patent and Trademark Office 21st Century Strategic Plan,
               Final Rule, 69 Fed. Reg. 56481 (September 21, 2004),
               1287 Off. Gaz. Pat. Office 67 (October 12, 2004).

December 8, 2004                                                      4
                    Significant Changes
            § 1.4             Signatures (adding Electronic and S-signatures)
            § 1.6             Submission of Drawing by Facsimile
            § 1.17            Petition Fees
            § 1.19            Document Supply Fees
            § 1.27            Small Entity Status
            § 1.52            Font Sizes, Compact Disc Specifications
            § 1.57 (New)      Incorporation by Reference
            §§ 1.58, 1.83     Tables, Sequence Listings
            § 1.76            Application Data Sheet
            § 1.78            Benefit Claims
            § 1.84            Drawings
            §§ 1.91, 1.94     Models, Exhibits, Specimens
            § 1.98            Information Disclosure Statements
            § 1.102           Advancement of Examination
            § 1.105           Requirements for Information
            § 1.111           Supplemental Replies
            § 1.115           Preliminary Amendments
            §§ 1.175, 1.178   Reissue Applications
            § 1.215           Eighteen Month Publication
            §1.291            Protests
December 8, 2004                                                                5
                    Effective Dates
    There are three effective dates based on the September 21,
    2004 date of publication of the final rule in the Federal
    Register, as follows:
           1. September 21, 2004 - The changes to 37 CFR §§ 1.4, 1.6,
              1.10, 1.27, 1.57(a)(1) & (a)(2), 1.78, 1.84, 1.115, 1.137, 1.178,
              and 1.311.
           2. October 21, 2004 - The changes to 37 CFR §§ 1.8, 1.52,
              1.57 (b) – (g),1.58, 1.63, 1.69, 1.76, 1.83, 1.85, 1.91, 1.94,
              1.98, 1.102, 1.105, 1.111, 1.121, 1.131, 1.165, 1.173, 1.175,
              1.179, 1.215, 1.324, 10.18 and 104.3.
           3. November 22, 2004 - The changes to 37 CFR §§ 1.12, 1.14,
              1.17, 1.19, 1.47, 1.53, 1.57(a)(3), 1.59, 1.84(a)(2), 1.103,
              1.136, 1.182, 1.183, 1.291, 1.295, 1.296, 1.377, 1.378, 1.550,
              1.741, 1.956, 5.12, 5.15, 5.25 and 41.20.
December 8, 2004                                                                  6
                                  3 Types of Permitted Signatures
                                  37 CFR 1.4(d)

      I.      Handwritten (personally signed) signatures are now specifically
              provided for in § 1.4(d)(1).
      The following additional types of signature are now acceptable:
      II.     S-signatures (§ 1.4(d)(2)):
                      Example for signing applicant: /James Jones/
                                                      James T. Jones
      III.         Electronic Filing System (EFS) character coded (electronic)
                   signatures for correspondence transmitted via EFS (§1.4(d)(3))
                      Note: electronic signatures in EFS must be completed by filling in the
                       appropriate EFS menu
                      EFS signatures have previously been acceptable under a waiver.
      Note: Samples of acceptable signatures for applicants and registered
            practitioners are posted on the Office’s web site.
December 8, 2004                                                                                7
                                S-Signatures, 37 CFR 1.4(d)(2)
                                Definition and Uses

        An S-Signature is any signature between forward slashes that is not a
        handwritten (§§ 1.4(d)(1) or (e)) or an EFS character coded signature
         (§ 1.4(d)(3)).
         It is inserted between the forward slashes by electronic (e.g., a
             word processor) or mechanical means.
        S-Signatures may be used to sign all correspondence unless
        otherwise explicitly excluded (e.g., when an original handwritten or
        “wet” signature is required, such as is set forth in 37 CFR 1.4(e)).
         S-Signatures may be used on documents that are either:
              1.   Mailed or hand (courier) delivered,
              2.   Transmitted by facsimile, or
              3.   Submitted via EFS directly as an EFS Tagged Image File Format (TIFF) attachment
                   (e.g., scanned image), to the Office.

December 8, 2004                                                                                     8
                                S-Signatures – 5 Requirements
                                37 CFR 1.4(d)(2)
   1.    The S-signature must consist only of letters (including Kanji, etc.), or
         Arabic numbers, or both, and appropriate spaces, commas, periods,
         apostrophes, or hyphens for punctuation.
   2.    The S-signature must be placed between forward slashes.
   3.    The person signing must insert his or her own signature, § 1.4(d)(2)(i)
           Only the signer can insert their own signature:
                 •    a secretary, paralegal, etc., is not permitted to sign/
                      insert another person’s signature, e.g., a practitioner’s
                      signature, and
                 •    a practitioner is not permitted to sign/insert an
                      inventor’s signature.
   Note: Per the rule itself, the person inserting a signature certifies that the signature is his or her own
         signature (§ 1.4(d)(4)(ii)(B)).

December 8, 2004                                                                                                9
                              S-Signature – 5 Requirements (continued)
                              37 CFR 1.4(d)(2)
    4.     The name of the person signing must be printed or typed
           immediately adjacent (i.e, below, above, or beside) to the S-
           signature, and be reasonably specific, so the identity of the signer
           can be readily recognized.
              The name of the person signing may be inserted by someone
              other than the person signing, but the person signing must
              personally insert the S-Signature.
                   •   For example, a secretary, paralegal, etc., may type the name of the
                       person signing at any time (e.g., before or after the person signing inserts
                       his or her own signature).
    5.     A registered practitioner may S-sign but his or her registration
           number is required, either as part of the S-signature, or immediately
           below or adjacent to the signature.
               • For example: /John Attorney Reg. #99999/
                                 John Attorney
December 8, 2004                                                                                      10
                       Examples Where S-Signatures Can Be Used
           A practitioner creates a document and S-signature signs it on his/her
           PC. The practitioner can then:
              Facsimile transmit the document directly from the PC to the Office; or
              Print the document and then facsimile transmit, mail, or hand-carry the
               document to the Office
           An affidavit under § 1.132 is S-signed by the party making the
           affidavit, the S-signed affidavit is then:
            Electronically sent to the practitioner, e.g., via an e-mail. The practitioner can
                then facsimile transmit, mail or hand-carry the S-signature signed document
                to the Office.
       Note: Per the rule itself, the person submitting a document with an S-Signature or EFS
          character coded signature is certifying that they have a reasonable belief that the
          person whose signature is present on the document was inserted by that person
          § 1.4(d)(ii)(A).
December 8, 2004                                                                                  11
                              EFS Character Coded Signatures,
                              37 CFR 1.4(d)(3)
         EFS Character Coded signatures must consist only of English letters,
         Arabic numbers, or both, with punctuation typed into an EFS menu.
         (§ 1.4(d)(3)).
         The person signing must personally insert his/her electronic signature
         between forward slashes as with S-signatures but:
              The name of the signer is not required in the rule because it is a required EFS
               software input.
              The EFS software also determines the location of the signer’s printed name and
               registration number, if applicable.
         The following correspondence filed via EFS as an EXtensible Markup
         Language (XML) document may include an EFS character coded
         signature:
              new applications,
              assignments,
              amended biotech listings, and
              e-IDS’s.
December 8, 2004                                                                             12
                            Examples of EFS Signatures in IFW
          How correspondence created using, and transmitted via,
          EFS with a character coded signature appears in IFW
     1.        “Electronic Version” and “Stylesheet Version” appear in upper left
               portion of document indicating the version of EFS software used:




  2. Example: The character coded signature is labeled: “Signature” in
     declaration of this EFS version:




December 8, 2004                                                                    13
                    Name Requirement for S-Signatures and
                    EFS Character Coded Signatures

           There is no requirement that the signer’s actual,
           full or legal name be used.
             It is strongly suggested that the full name be used;
             The typed or presented name below the signature
              must be reasonably specific enough so that the
              identity of the signer can be readily recognized
              (37 CFR 1.4(d)(2)(iii)(B)).
           Titles may be included as part of the signature.

December 8, 2004                                                     14
                          Certification Requirements
                          37 CFR 1.4(d)(4)
   Certification Requirement (§ 1.4(d)(4)(ii)(A))
   A. For another’s signature: A person submitting a document
      signed by another under § 1.4(d)(2) or (d)(3):
          a.        is obligated to have a reasonable basis to believe that the
                   person whose signature is present on the document actually
                   inserted that signature, and
          b.       should retain evidence of authenticity of the signature.
   B. For your own signature: The person inserting a signature
      under § 1.4(d)(2) or (d)(3) in a document submitted to the
      Office certifies that the inserted signature appearing in the
      document is his or her own signature.
      Violations of the signature certifications may result in the
      imposition of sanctions under §§ 10.18(c) and (d).
December 8, 2004                                                                  15
                     Questionable Signatures

           Ratification, confirmation or evidence of authenticity of a
           signature may be required where the Office has:
              Reasonable doubt as to to its authenticity,
              Where the signature and typed or printed name do not clearly
               identify the person signing.
           The failure to follow the S-signature format and content
           requirements will usually be treated as a bona fide
           attempt, but will cause the paper to be treated as
           unsigned with differing results, e.g.:
              Amendments would receive a new 1-month time period
              § 1.63 declarations, would receive a two month time period
               and a surcharge may be imposed.
December 8, 2004                                                              16
                      Drawings May Be Submitted
                      by Facsimile - 37 CFR 1.6
         Effective date: September 21, 2004
         Black and white drawings will be permitted to be transmitted
         to the Office by facsimile in all applications other than
         original filings:
        Codified previously accepted practice
        Color photographs or color drawings must continue to be hand-
         carried or mailed to the Office instead of being sent by
         facsimile; and
        Black and white photographs or drawings with fine details
         should not be sent by facsimile:
         • Transmission via facsimile may degrade the quality of the
            drawings. The Office will generally print what is filed.
December 8, 2004                                                         17
                                             Petition Fees
                                             37 CFR 1.17
        Petition fees have been adjusted to more accurately reflect the Office’s
        current cost of treating petitions pursuant to 35 U.S.C. § 41(d).
        Three levels of petitions fees are provided:
       1. $130 petition fee retained in § 1.17(h);
             •     e.g., § 1.102(d) to make an application special,
       2. $200 petition fee created in § 1.17(g);
             •     e.g., § 1.47 nonsigning inventor and § 1.59 expungement, and

       3. $400 petition fee created in § 1.17(f).
             •     e.g., § 1.53(e) to accord a filing date, § 1.182 for questions not specifically
                   provided for, and § 1.183 for waiver of a requirement of the rules.
        New form PTO/SB/17p is available on the USPTO forms web page.

December 8, 2004                                                                                 18
                              Document Supply Fees
                              37 CFR 1.19
         Copies of files and/or documents may be provided in paper or
         electronic form.
         Electronic form may be:
         Compact disc (CD);
         Transmitted over Internet; or
         Another electronic medium as designated by the Director.
         For a copy of an application file wrapper and contents, the fee
         will be:
         $200 – if provided on paper (up to 400 pages); or
         $55 – if provided on one compact disc or other electronic form.
         The seven-day requirement for processing copy requests is
         removed.
December 8, 2004                                                            19
                             Small Entity Status
                             37 CFR 1.27
           Impact of a Security Interest Held by a Large Entity: A
           security interest in an application or patent held by a large
           entity is not a sufficient interest to bar entitlement to small
           entity status so long as the security interest is not triggered.
           (§ 1.27(a)(5)).
           Impact of SBA Requirements on Foreign Applicants: Certain
           Small Business Administration (SBA) requirements relating to
           location in the U.S. or making a significant contribution to the
           U.S. economy do not bar entitlement to small entity status for
           patent applicants. (§ 1.27(a)(2)(ii)).

December 8, 2004                                                        20
                       Font Sizes 37 CFR 1.52(b)


          Recommended Font Size: The rule is revised to
          recommend that the preferred font size of text is 12 points,
          which is identified in the preamble discussion as
          approximately 0.166 inches or 0.422 cm high
          (§ 1.52(b)(2)(ii)). See also § 1.58(c).




December 8, 2004                                                         21
                       Compact Disc Specifications
                       37 CFR 1.52(e)
  The requirements permitting tables on compact disc are changed:
    A table of any size may be placed on a compact disc if the total
       number of pages of all the tables in an application exceeds 100 pages
       in length (or any single table more than 50 pages in length, which
       practice is unchanged) (§ 1.52(e)(1)(iii));
    What constitutes a table page is clarified to be a page printed on paper
       pursuant to §§ 1.52(b) and 1.58(c) of this section (§ 1.52(e)(1)(iii));
    CD’s must be finalized to assure archival nature of discs. Finalized
       means that the compact discs are closed to adding further data
       (§ 1.52(e)(3)(i));
    Landscape orientation should be indicated on the transmittal letter: It is
       clarified that landscape orientation of a table is an example of special
       information needed to interpret that table and such information should
       be provided on the transmittal letter (§ 1.52(e)(3)(ii)).
December 8, 2004                                                             22
                      Incorporation by Reference 37 CFR § 1.57
                      (New Rule)

           37 CFR § 1.57 is added to provide for incorporation by
           reference.
            1) Section 1.57(a) is added so a priority/benefit claim can be
               considered an incorporation by reference of a prior-filed
               application as to inadvertently omitted material only.
            2) Sections 1.57(b) through (e) treat incorporation by reference of
               essential and nonessential material into an application.
            3) Section 1.57(f) covers how material incorporated by reference is
               inserted, by amendment into the specification or drawings of an
               application.
            4) Section 1.57(g) codifies that a noncompliant incorporation by
               reference is not effective, and sets forth the requirements for
               correcting the incorporation by reference to be compliant.
December 8, 2004                                                              23
                                 Priority/Benefit Claim can be Considered an
                                 Incorporation by Reference of a Prior-Filed
                                 Application - 37 CFR 1.57(a) (New Rule)
           Priority/benefit claims will now act as an incorporation by
           reference of a prior-filed application as to inadvertently omitted
           material only. 37 CFR 1.57(a).
           Applies to applications filed on or after September 21, 2004
           (effective date for 1.57(a)):
              The application which inadvertently omitted material must be filed on or
               after the effective date
              but the prior-filed application being relied upon for the omitted material
               can be filed prior to the effective date.
           Prior practice: Applicant could only add to the current application
           material found in a prior application if the prior application was
           expressly incorporated by reference.
              Material found in a parent application may now be added under § 1.57(a)
               (limited to inadvertent omissions) or under express incorporation by
               reference provision, if present.
December 8, 2004                                                                            24
                                  Priority/Benefit Claim can be Considered an
                                  Incorporation by Reference of a Prior-Filed
                                  Application - 37 CFR 1.57(a) (Requirements)
           Requirements for corrective amendment under § 1.57(a):
           All or a portion of the specification or drawing(s) from a prior-filed
           application may be added by corrective amendment to a later-
           filed application claiming the priority/benefit of the prior-filed
           application under § 1.55 or § 1.78, where:
                   a) The claim was present on the filing date of the later-filed application;
                   b) The material to be added was inadvertently omitted from the later-filed
                   application; and
                   c) The omitted portion is completely contained in the prior-filed application.
           Mere reference to another co-pending application is not a benefit
           claim (e.g., a statement that prior patent application 09/123456 is
           copending with the current application), and it will not be treated as
           an incorporation by reference of any subject matter found therein.
December 8, 2004                                                                                    25
                                Priority/Benefit Claim can be Considered an
                                Incorporation by Reference of a Prior-Filed
                                Application – 37 CFR 1.57(a) (Requirements)

         Additional Requirements for Corrective Amendment: Along with the
         amendment to include inadvertently omitted material, applicant must
         submit:
                   a) A copy of the prior application, except where the prior application is filed
                   under 35 U.S.C. 111;
                   b) An English language translation, if the prior application is in a foreign
                   language; and
                   c) Identification of where in the prior application the omitted portion to be
                   added to the later application can be found.
         A statement that the omission was inadvertent is not required.
               Any amendment to add the omitted material would constitute a certification
                under § 10.18(b).


December 8, 2004                                                                                     26
                       Priority or Benefit Claim can be Considered an
                       Incorporation by Reference of a Prior-Filed Application
                       37 CFR 1.57(a) (Requirements)

         Timeliness Requirement for corrective amendment:
             a) If noted by OIPE or the examiner: within any time period set by
             the Office,
             b) If noted by applicant: not later than close of prosecution (as
             defined by § 1.114(b)) or the abandonment of the application,
             whichever occurs earlier.
         Any amendment to an international application is effective only as to
         the U.S., and shall not affect the international filing date of the
         application.




December 8, 2004                                                                  27
                      Incorporation by Reference of Essential and
                      Nonessential Material 37 CFR 1.57(b)-(g) (New)

             Sections 1.57(b)-(g) generally codified the existing incorporation
             by reference practice set forth in MPEP 608.01(p)(8th Ed., rev 2,
             May 2004) with some changes.
                  Definitions of essential and non-essential material have been added.
             The new provisions in § 1.57(b)-(g) apply to applications filed on
             or after October 21, 2004
             Clear intent and identification still required. To be an effective
             incorporation by reference, it must be expressly presented in the
             specification, § 1.57(b), as follows:
                     1)   using the root words: “incorporate” and “reference” is now
                          required, and
                     2)   the referenced patent, application, or publication must be clearly
                          identified.
December 8, 2004                                                                               28
                   Incorporation by Reference of Essential Material
                   37 CFR 1.57(c) (New)

           Essential material is material to support claimed invention
           requirements of 35 U.S.C. 112, paragraphs 1, 2 and 6.
           § 1.57(c)(1)-(3)
           Essential Material may be incorporated by reference only to:
             U.S. patents or U.S. patent application publications, but
                the referenced patent or publication may not itself
                incorporate such essential material. § 1.57(c)
           Pending unpublished U.S. applications:
             Essential material may no longer be incorporated by
                reference to an unpublished pending application.
                      The practice of incorporating by reference essential material found in
                       unpublished applications in which the issue fee has been paid has
                       been eliminated.
December 8, 2004                                                                                29
                    Incorporation by Reference of Essential and
                    Nonessential Material 37 CFR 1.57(d),(e) & (g) (New)

              Nonessential material may be incorporated by reference to:
                 U.S. and foreign patents, publications (including U.S. & foreign
                 application publications, and non-patent literature), and
                 commonly owned U.S. applications. § 1.57(d).
              Material may not be incorporated using hyperlinks or other form of
              browser executable codes.
              Examiner may require submission of a copy of the material
              incorporated even if properly incorporated. § 1.57(e)




December 8, 2004                                                                    30
                   Incorporation by Reference of Essential and
                   Nonessential Material 37 CFR 1.57(f) & (g) (New)

           An incorporation by reference that does not comply with
           §1.57(b), (c), or (d) is not effective.
           There are two correction options when the application
           as filed clearly conveys an intent to incorporate
           specific material by reference:
              but the root words are not used, and/or
              the referenced document is sufficiently described but not
               clearly identified or
              the material being incorporated is essential material but is
               found in certain documents (e.g., pending U.S. applications,
               foreign patent documents and NPL).
December 8, 2004                                                              31
                      Incorporation by Reference of Essential and
                      Nonessential Material 37 CFR 1.57(f) & (g) (New)
      Correction of an ineffective incorporation by reference:
        Option 1: An amendment may be made a) to insert the required root
        words, and/or b) to clearly identify the referenced patent, U.S.
        application publication, or if nonessential material, the application or
        other publication. See § 1.57(g).
              Example: Given language “the disclosure of application attorney docket number
              1234.5 entitled “Glow in the Dark Tennis Ball” to Jones, filed Jan. 1, 2003 is
              hereby incorporated by reference.”
              A permitted amendment would be: “the disclosure of U.S. patent 5,555,555
              entitled “Glow in the Dark Tennis Ball” to Jones is hereby incorporated by
              reference.”
              Note: An application number (if non-essential material) may be used to replace
              “attorney docket number 1234.5.”


December 8, 2004                                                                               32
                      Incorporation by Reference of Essential and
                      Nonessential Material 37 CFR 1.57(f) & (g) (New)
     Correction of an ineffective incorporation by reference (continued)
        Option 2: An amendment may be made inserting the material
        intended to be incorporated. § 1.57(f).
               This option could be used for adding essential material found in certain
                documents (e.g., pending U.S. applications, foreign patent documents and
                NPL).
                     Where incorporation by reference would be improper
               This option could additionally be used for adding nonessential material.
               An amendment to include the incorporated material must be accompanied
                by a statement that the material being inserted is the material previously
                incorporated by reference and that the amendment contains no new
                matter.
                     This requirement is a change from previous practice.
                     An affidavit or declaration (that the amendatory material consists
                        of the same material incorporated by reference in the referencing
                        application) is no longer required. Form Par. 6.19 will be updated
                        consistent with § 1.57(f).
December 8, 2004                                                                             33
                   Incorporation by Reference of Essential and
                   Nonessential Material 37 CFR 1.57(g) (New)

              If an incorporation by reference of essential material is ineffective,
              such as incorporation from a pending unpublished application,
              (which is no longer permitted), a rejection under 35 USC 112
              paragraphs 1, 2 or 6 will be made, as appropriate.
              Applicants should not request to hold a correction of an
              incorporation by reference in abeyance since such a request to
              hold a correction in abeyance is no longer permitted.
              Any applicant initiated correction must be made no later than close
              of prosecution as defined in § 1.114(b) or abandonment,
              whichever is earlier. § 1.57(g).


December 8, 2004                                                                       34
                             Tables, Sequence Listings, &
                             Font Sizes, 37 CFR 1.58 and 1.83
        Tables and Sequence Listings included in the specification
        must not be duplicated in the drawings (§§ 1.58(a), 1.83):
           The prohibition does not apply to applications filed under   35
            USC 371.
        Tables filed in electronic form must be encoded to visually
        maintain the relational information they convey when the file
        is opened for viewing in the Office (e.g., rows and columns)
        (§ 1.58(b)).
        Recommended Font Size: The rule is revised to recommend
        that the preferred font size is 12, which is approximately
        0.166 inches or 0.422 cm high (§ 1.58(c)).               See
        also § 1.52(b)(2)(ii).
December 8, 2004                                                              35
                         Application Data Sheet (ADS)
                         37 CFR 1.76
        ADS, and any supplemental ADS, must have:
           The appropriate title (i.e., “Application Data Sheet” or
              “Supplemental Application Data Sheet”);
           All seven section headings;
           The appropriate data for each section; and
           Additionally, for supplemental ADSs, identification of what is
              being corrected, added, or deleted.
        A supplemental ADS must be a complete replacement ADS showing
        the changes using underlining and strike-through.
           Submitting only the changes or new information in a
              supplemental ADS is no longer permitted.


December 8, 2004                                                             36
                              Application Data Sheet (ADS)
                              37 CFR 1.76

           If an ADS is inconsistent with information provided in
           another document that was submitted at the same time or
           prior to the ADS submission, the ADS will control:
                  e.g., the correspondence address designated in an ADS is used
                   instead of the address in a transmittal letter that was submitted
                   prior to or with the ADS,
                  but not for inventorship or citizenship. (§ 1.76(d)(1) and (2))
           The option of utilizing a § 1.63 oath or declaration to
           correct captured bibliographic data has been eliminated
           (§ 1.76(d)(4)).
December 8, 2004                                                                       37
                   Domestic Benefit Claims & Double Patenting Rejections
                                        37 CFR 1.78
       Effective Date: September 21, 2004
       Former practice required a single sentence to identify benefit claims to
       prior U.S. applications. This is still permitted.
       Multiple Sentences Permitted: multiple sentences forming a continuous
       string starting with the first sentence of the specification are now
       permitted to identify benefit claims to prior U.S. applications.
          The multiple sentences must begin as the first sentence after the title, and the
           second, or any additional, sentence including a benefit claim must follow the first
           sentence and not be separated from the first sentence by any other sentence not
           making a benefit claim.




December 8, 2004                                                                             38
                Domestic Benefit Claims & Double Patenting Rejections
                                     37 CFR 1.78
       Double Patenting Rejections: the rule clarifies that the prior art
       exclusion under 35 U.S.C. 103(c) (common assignee) does
       not preclude a double patenting rejection. § 1.78(c).
          Applicants responsibility has not changed. They should still
           disclose all related applications where a double patenting rejection
           can be made, and should disclose any related application(s) if
           there is any doubt. 37 CFR 1.56.




December 8, 2004                                                                  39
                                  Drawings
                                  37 CFR 1.84
           Codification of a previous OG Notice to remove the requirement for
           black and white copies of color drawings and photos.
           Adds recommendation that original drawings include identification
           labels, and if labels are provided they must be placed on (§ 1.84(c)):
                front of drawing, and
                within the top margin.
           Identification Labels: To be consistent with § 1.121(d), drawings
           submitted in an amendment must be identified as either:
                “Replacement Sheet” (amended drawing),
                “New Sheet,” or
                “Annotated Sheet” (for a marked-up copy).

December 8, 2004                                                                    40
                          Models, Exhibits, and Specimens
                          37 CFR 1.91 and 1.94
      Effective Date: October 21, 2004
      Photos Now Required: Physical models or exhibits that the Office cannot
      scan must be accompanied by photographs substantially in compliance
      with § 1.84, showing adequate multiple views of material features.
      Artifact File: Models, exhibits or specimens that cannot be scanned for
      IFW, will be stored in artifact folders until they can be disposed of.
      Applicant can be required to arrange for the return of their model, exhibit
      or specimen upon notification at applicant’s expense when they are no
      longer necessary for the conduct of business before the Office. Retention
      by applicant is ordinarily required for the enforceable life of any patent.
      The Office will dispose of perishables without notice to the applicant
      unless applicant notifies the Office upon submission that a return is
      desired and promptly makes arrangements for their return upon
      notification by the Office.
December 8, 2004                                                               41
                                Information Disclosure Statements
                                37 CFR 1.98 - No Copies Required
      Applies to pending applications.
      Per § 1.98(a)(2), a copy of each cited U.S. patent and U.S. patent
      application publication is no longer required to be filed with an IDS. The
      filing date of the application being examined is no longer relevant.
              Strategic Plan Final Rule, effective October 21, 2004
              This rule expands on Information Disclosure Statements May Be Filed Without Copies of
               U.S. patents and Published Applications in Patent Applications filed after June 30, 2003,
               1273 Off. Gaz. Pat. Office 55 (August 5, 2003).
      Per waiver in OG Notice, a copy of each cited pending U.S. patent
      application, or portion of the application which caused it to be listed, is no
      longer required to be filed with an IDS if:
             1. The cited pending application is stored in the IFW system; and
             2. The cited information is limited to the specification, including the claims, and
                drawings, of the cited pending U.S. application, even if it is stored in an artifact
                folder. See examples on the next slide.
      See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited Pending U.S. Patent Applications,
      1287 Off. Gaz. Pat. Office 163 (October 19, 2004)(signed Sept. 21, 2004).
December 8, 2004                                                                                     42
                               Information Disclosure Statements
                               37 CFR 1.98 – OG Waiver, Artifacts
  Examples when a pending U.S. patent application is cited in an IDS
         Example 1: If the cited information from a pending application in IFW
         is a sequence listing or large table stored on a CD that is part of the
         specification, a copy of the sequence listing or table stored on a CD is
         not required. Examiner may order the CD from the artifact folder of
         the cited pending application when considering the IDS.
         Example 2: If the cited information from the pending application is an
         Office action, affidavit, exhibit, or IDS filed in the cited pending U.S.
         application which is not part of the specification, a copy of the cited
         paper is required.
                  Applicant should cite the pending U.S. application in the “Non Patent
                   Literature Documents” section of the PTO/SB/08B and provide a copy of the
                   paper.

December 8, 2004                                                                               43
                              Information Disclosure Statements
                              37 CFR 1.98 - Copy Requirements
           Applicants are still required to submit a copy of:
         a) Each cited foreign patent document;

         b) Each cited non-patent literature publication, or the portion therein
            which caused it to be listed;

         c) Each cited U.S. pending application that is not stored in IFW;

         d) All information cited (e.g., an affidavit or Office action), other than the
            specification, including claims and drawings, of a pending U.S.
            application; and

         e) All other cited information or the portion which caused it to be listed.
December 8, 2004                                                                    44
                              Information Disclosure Statements
                              37 CFR 1.98 - Electronic Submissions
               Recommendation: Applicants are encouraged to file an e-IDS via
               EFS for U.S. patents and patent application publications rather than
               a paper IDS form (1449 or PTO/SB/08) listing the citations.

               A paper IDS may include a compact disk (CD) that has tables,
               sequence listings, or program listings. See 37 CFR 1.52(e).

               A CD cannot be used to submit an IDS listing, nor copies of patents
               and publications.
               A large number of citations of U.S. patents, U.S. patent application
               publications and U.S. patent applications may trigger an Office
               requirement for applicant to supply paper copies for all citations.
               See preamble discussion in Final Rule notice.
December 8, 2004                                                                 45
                        Information Disclosure Statements
                        37 CFR 1.98 - Format Requirements

         Additional format requirements for the listing of cited prior art
         documents:
        a) A separate section for citations of U.S. patents and U.S. patent
           application publications;
        b) The application number of the application in which the IDS is being
           submitted on each page of the listing;
        c) A column that provides a blank space next to each citation for the
           examiner’s initials when the examiner considers the cited
           document; and
        d) A heading on the listing that clearly indicates that the list is an
           Information Disclosure Statement (e.g., not a citation of prior art
           under § 1.99 or § 1.291).

December 8, 2004                                                                 46
                       Information Disclosure Statements
                       37 CFR 1.98 - Format Requirements
      Applicants will generally comply with the format requirements
      if they use current forms PTO/SB08A & B (Rev. 08-03 or
      later).
      An IDS list that is, or includes, a copy of a previously initialed
      PTO-1449 or PTO/SB/08 form from another application may
      no longer be acceptable
        it may not have a blank space for the examiner to initial and
        the correct application number may not be on each page of the list.
      If the IDS is not in compliance with the format requirements, it
      may not be considered.

December 8, 2004                                                               47
                       Advancement of Examination
                       37 CFR 1.102
              A petition without fee to make an application special
              based on an invention’s ability to counter terrorism
              has been established. § 1.102(c).
              There must be a good faith effort to determine that the
              claimed invention is in fact materially directed to
              countering terrorism. §§ 1.56 and 10.18(b).

    Note: Where the disclosure of the application is not clear on
          its face that the claimed invention is materially
          directed to countering terrorism, an explanatory
          statement to that effect is required. MPEP 708.02, XI.
December 8, 2004                                                        48
                             Requirements for Information
                             37 CFR 1.105
      Section 1.105 has been amended to additionally provide for requiring
      factual information (not opinions nor the level of ordinary skill in the art)
      via:
          Interrogatories in the form of specific questions seeking applicant’s
            factual knowledge; or
          Stipulations as to facts with which the applicant may agree or
            disagree.
      The types of factual information concerning:
          The related art;
          The disclosure;
          Claimed subject matter;
          Other factual information pertinent to patentability; or
          The accuracy of the examiner’s stated interpretation of such items.
December 8, 2004                                                                  49
                              Requirements for Information
                              37 CFR 1.105

       Specific examples of applicant’s actual knowledge:
         1. The common technical features shared among all claims or
            admission that certain groups of claims do not share any common
            technical features;
         2. The support found in the disclosure for means or step plus
            function limitation recited in the claim (the corresponding
            structure, material or acts) (35 U.S.C. 112, 6th paragraph);
         3. The portions of the disclosure that provide the written description
            and enablement support for specific claim elements;
         4. The intended meaning of claim limitations or terms, such as what
            teachings in the prior art would be covered and which dictionary
            definitions would be appropriate.
December 8, 2004                                                                  50
                              Requirements for Information
                              37 CFR 1.105
        Specific examples of applicant’s actual knowledge
        (continued):
          5. The portions of each claim that correspond to any admitted
             prior art of the specification;
          6. The specific utility provided by the claimed subject matter on a
             claim by claim basis;
          7. Whether a dependent claim element is known in the prior art
             based on the examiner having a reasonable basis for believing
             so;
          8. The support for added limitations in an amended claim; and
          9. The facts related to public use or sale situations.

December 8, 2004                                                                51
                                     Requirements for Information
                                     37 CFR 1.105
      The Office may accept as a complete reply to a requirement for factual
      information that the information is unknown or is not readily available,
      without further specification as to which of the two is relied upon:
        Such reply may only be used after applicant has made a good faith
           attempt to obtain the information based on reasonable inquiry; and
        Such reply may affect the prosecution of the application, e.g.:
                   •   Where the inquiry is in regard to correlation of structure set forth in the
                       specification with a claim under 35 U.S.C. 112, paragraph 6, a reply that
                       the correlation in the specification is unknown may cause, e.g., rejections
                       under 35 U.S.C. 112, paragraphs 1 and 2 to be made.
      For a transition period, the Office will provide management review of
      requirements for information for interrogatories and stipulations.

December 8, 2004                                                                                 52
                                Supplemental Replies
                                37 CFR 1.111(a)(2)
    Supplemental replies are no longer entered as a matter of right.
    After a complete reply has been filed, the Office may enter a supplemental
    reply that is filed before final rejection or allowance and in sufficient time
    to be entered into the application file, if the subsequent reply is clearly
    limited upon cursory review to:
            •   Cancellation of claims;
            •   Adoption of an examiner suggestion(s);
            •   Placement of the application in condition for allowance;
            •   Reply to an Office requirement made after the first reply was filed;
            •   Correction of informalities (e.g., typographical errors); or
            •   Simplification of issues for appeal.


December 8, 2004                                                                       53
                               Supplemental Replies
                               37 CFR 1.111(a)(2)

           Supplemental replies filed during a suspension of action under
           § 1.103(a) or (c) will continue to be entered as a matter of right.
           If the applicant wishes to have a (not-entered) supplemental
           reply considered by the examiner, applicant must include the
           contents of the supplemental reply in a subsequent proper reply.
           IDSs are not considered replies and are not subject to the new
           limitations:
              except where a second IDS is submitted in reply to a § 1.105 requirement
               for information.




December 8, 2004                                                                          54
                          Preliminary Amendments
                          37 CFR 1.115
           Effective Date: Applies to applications filed on or after
           September 21, 2004.
           Preliminary amendments that are present on the filing date
           of an application are treated as part of the original
           disclosure:
              Applicants are responsible for reviewing all preliminary
               amendments present on the filing date and providing a reference
               thereto in a § 1.63 oath or declaration for each such preliminary
               amendment containing subject matter not otherwise present in
               the application as filed.
           Preliminary amendments seeking cancellation of all the
           claims without presenting any new or substitute claims will
           be disapproved.
December 8, 2004                                                               55
                               Reissue Applications
                               37 CFR 1.175 and 1.178
            If a reissue continuation of a reissue application is filed
            and the parent reissue is not being abandoned, then the
            continuation must identify an error not corrected in the
            parent reissue application. § 1.175.
            The requirement for physical surrender of the original
            patent has been eliminated. § 1.178.
              Surrender is automatic upon grant of the reissue
               patent.
              Effective date: September 21, 2004, the date of
               publication of the final rule.
              Applies retroactively to all pending reissue applications.

December 8, 2004                                                            56
                       Eighteen Month Publication of Application
                       37 CFR 1.215

        Patent application publications may be based on amendments to
        (§ 1.215(a)):
          Abstract;
          Claims that are reflected in a complete claim listing;
          Drawings; and
          Specification (other than abstract or claims) if amended via a
             substitute specification.
        The amendment must be submitted in sufficient time to be entered into
        the Office file wrapper of the application before technical preparations
        for publication have begun:
          Generally four months prior to the projected date of publication.

December 8, 2004                                                                   57
                          Protests, Second or Subsequent
                          37 CFR 1.291
           A statement must accompany a protest that it is the first protest
           submitted in the application by the real party in interest (who does not
           need to be identified), or there must be compliance with the
           requirements for second or subsequent protests (§ 1.291(b)(2)):
           This section does not apply where a protest is the first protest in the
           application.
           To eliminate cumulative prior art submissions by a single protester,
           second or subsequent protests must explain: (a) why additional prior
           art issues are significantly different; and (b) why they were not earlier
           presented. (§ 1.291(c)(5)).
           In addition, a processing fee under § 1.17(i) is required.


December 8, 2004                                                                       58
                    List of Contacts
      Generally : Robert Spar, Director (571) 272-7700
                   Hiram Bernstein (571) 272-7707
      Office of Patent Legal Administration (571) 272-7701
              §§ 1.4, 1.52, 1.57 (b)-(g), 1.58(b) & (c) - Michael Lewis (571) 272-7755
              §§ 1.6, 1.19, 1.58(a) & (c), 1.83, 1.84 - Karin Ferriter (571) 272-7744
              §§ 1.17, 1.102, 1.291 - James Engel (571) 272-7725
              §§ 1.27, 1.57(a), 1.91, 1.94 - Eugenia Jones (571) 272-7727
              §§ 1.78, 1.98 - Jeanne Clark (571) 272-7714
              § 1.76 - Kery Fries (571) 272-7757
              § 1.105 - Anton Fetting (571) 272-7717
              § 1.111 - Joni Chang (571) 272-7720
              § 1.115 - Fred Silverberg (571) 272-7719
              § 1.215 - Mark Polutta (571) 272-7709
              §§ 1.175, 1.178 - Kenneth Schor (571) 272-7710
December 8, 2004                                                                          59
                    For More Information

        Questions and answers regarding this final rule package will
        be posted on the Office’s official website,
        http://www.uspto.gov.

        This slide set, signature examples and executive summary
        are also available on the Office’s web site at:
        http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/
        spfrmoreinfo.html


December 8, 2004                                                       60
                       II.   Rules of Practice before the Board of Patent
                             Appeals and Interferences Changes



                   Rules of Practice before the Board of Patent Appeals and
                   Interferences, Final Rule, 69 Fed. Reg. 49959 (August 12, 2004),
                   1286 Off. Gaz. Pat. Office 204 (September 7, 2004).
                   Effective date: September 13, 2004

December 8, 2004                                                                  61
                                Practice Before the BPAI
 Effective Date: September 13, 2004
         Generally, any paper filed by applicants or mailed by the Office on or
         after September 13, 2004 must comply with the revised or new rules.
         Appeal briefs filed prior to September 13, 2004 must either comply with
         former § 1.192 or new § 41.37.
         Certificate of mailing or transmission in compliance with § 1.8 will be
         applicable to determine if a paper was filed prior to the effective date in
         order to determine which rule applies.

         For more information concerning the effective date, see OG notice,
         Clarification of the Effective Date Provision in the Rules of Practice
         Before the Board of Patent Appeals and Interferences (Final Rule),
         available on the USPTO web site at www.uspto.gov.

December 8, 2004                                                                   62
                             Practice Before the BPAI

      New part 41 for rules relating to appeals and practice
       before BPAI:
      General Provisions – subpart A, §§ 41.1-41.20.
      Ex Parte Appeal – subpart B, §§ 41.30-41.54.
      Inter Partes Reexamination Appeal – subpart C, §§ 41.60-41.81.
      Contested Cases (including interferences) – subpart D, §§41.100-41.158.
      Patent Interferences – subpart E, §§ 41.200-41.208.
      Section 1.191 has been revised to refer to part 41.
      Sections 1.192-196 have been deleted.


December 8, 2004                                                           63
                                Practice Before the BPAI
         Subpart B – Ex Parte Appeals:
         Definitions - § 41.30.
         Appeal to Board - § 41.31.
         Amendments and affidavits or other evidence after appeal - § 41.33.
         Jurisdiction over appeal - § 41.35.
         Appeal brief - § 41.37.
         Examiner’s answer - § 41.39.
         Reply brief - § 41.41
         Examiner’s response to reply brief (supplemental examiner’s answer) - § 41.43.
         Oral hearing - § 41.47
         Decisions and other actions by the Board - § 41.50
         Rehearing - § 41.52
         Action following decision - § 41.54.
December 8, 2004                                                                    64
                      Practice Before the BPAI
  Significant Changes for Ex Parte Appeals:
  1.     The standard for entering affidavits or other evidence submitted after a
         final rejection now are set forth in §1.116(e) and §41.33(d)(1) & (d)(2).
  2.     The requirements of the content and format of the appeal brief have
         been revised (§41.37).
  3.     Examiner's answer may include a new ground of rejection (§41.39).
          • Appellant may request that prosecution be reopened (§41.39(b))
               when the examiner’s answer includes a new ground of rejection.
  4.     Supplemental examiner's answer is permitted to respond to any new
         issue raised in the reply brief (§41.43).
  5.     After a BPAI remand for further consideration of a rejection, if an
         examiner’s answer is written, appellant may request that prosecution
         be reopened (§41.50(a)(2)).

December 8, 2004                                                                 65
                      Practice Before the BPAI
   The practice for amendments filed after final action, but prior to the date
 of filing a brief, has not changed (§§1.116 and 41.33(a)).
   Sections 41.33(a), (b) & (c) apply to amendments.
   Sections 41.33(d)(1) & (d)(2) apply to affidavits and other evidence.

                                               §§ 41.33(b),(c) & (d)(2)
                      §§ 41.33(a) & (d)(1)
          § 1.116



                    Notice                Appeal                   Decision
   FR               Of Appeal             Brief
December 8, 2004                                                                 66
                    Practice Before the BPAI
                    Amendments - §1.116 and §41.33(a)
     The practice for amendments filed after final action, but prior to
     the date of filing a brief, has not changed (§1.116 and §41.33(a)
     have the same standard for entry).
     Amendments filed after the mailing of a final Office action, but prior to
      the date of filing a brief, may be admitted only to:
      • Cancel claims;
      • Comply with any requirement of form expressly set forth in a
         previous action;
      • Present rejected claims in better form for consideration on appeal; or
      • Amend the specification or claims upon a showing of good and
         sufficient reasons why the amendment is necessary and was not
         earlier presented.

December 8, 2004                                                            67
                     Practice Before the BPAI
                     Amendments - §1.116 and §41.33(a)

      The practice for amendments filed after final action, but prior
      to the date of filing a brief, has not changed (§1.116 and
      §41.33(a) have the same standard for entry) (continued).
       If an amendment filed after final action, but prior to the date
          of filing an appeal brief, is denied entry, an advisory action
          (PTOL-303) will be mailed to notify the applicant of the
          reason for non-entry.
       Examiner may enter an amendment filed after final action,
          but prior to the date of filing an appeal brief, that places the
          application in condition for allowance.

December 8, 2004                                                         68
                         Practice Before the BPAI
                         Amendments - §41.33(b) & (c)
        New § 41.33(b) provides that amendments filed on or after
        the date of filing an appeal brief may be admitted only to:
         – Cancel claims, where such cancellation does not affect the scope
           of any other pending claim in the proceeding, or
         – Rewrite dependent claims into independent form.
            • No limitation of a dependent claim can be excluded in
                rewriting that claim into independent form.
        New § 41.33(c) provides that all other amendments filed
        after notice of appeal will not be entered,
          With a few exceptions, e.g., applicant requests that prosecution
           be reopened where the examiner’s answer includes a new ground
           of rejection.
December 8, 2004                                                              69
                   Practice Before the BPAI
                   Affidavits or Other Evidence - § 1.116(e)
Rule 1.116 now specifically applies to affidavits or
   other evidence
       Affidavits or other evidence filed after final action, but
       before or on the date of filing a notice of appeal, may be
       admitted upon a showing of good and sufficient reasons why
       the affidavit or other evidence is necessary and was not
       earlier presented (§ 1.116(e)).
          • Other evidence includes declarations and exhibits, but
              not IDSs (which are treated in accordance with
              §§ 1.97 and 1.98).
December 8, 2004                                                     70
                     Practice Before the BPAI
                     Affidavits or Other Evidence - §41.33(d)(1)&(d)(2)

    Affidavits or other evidence filed after the date of filing a
    notice of appeal, but prior to the date of filing a brief,
    (§41.33(d)(1)) may be admitted if the examiner determines that:
      A showing of good and sufficient reasons why the affidavit or other
       evidence is necessary and was not earlier presented has been made;
       and
      The affidavit or other evidence overcomes all rejections under appeal.

    Section 41.33(d)(2) provides that all other affidavits or other
    evidence filed after the date of filing a notice of appeal will not
    be entered,
      With a few exceptions, e.g., applicant requests that prosecution be
       reopened where the examiner’s answer includes a new ground of
       rejection.
December 8, 2004                                                                71
                                Practice Before the BPAI
                                 Appeal Brief - § 41.37

 Appeal Brief – copy requirement and time for filing (§ 41.37)
    One copy of the brief is required rather than three copies
    consistent with the implementation of IFW.
    The brief is required to be filed within two months from the
    date of filing of the notice of appeal.
           The time allowed for reply to the action from which the appeal was
            taken is no longer relevant.
        The time period for filing the brief is extendable under:
           §§ 1.136(a) & (b) for patent applications (e.g., may extend up to five
            months after the two month time period); and
           § 1.550(c) for ex parte reexamination proceedings. See §41.37(e).

December 8, 2004                                                                 72
                               Practice Before the BPAI
                                Appeal Brief - § 41.37

 Appeal Brief – effective date impact
        Appeal Brief filed on or after September 13, 2004 must be in
        compliance with the requirements of § 41.37(c).
        Appeal Brief filed prior to September 13, 2004 must either be in
        compliance with the requirements set forth in former § 1.192 or new
        §41.37(c).
        If an appeal brief filed prior to the effective date fails to comply with
        former § 1.192 and the Office mails a notice requiring correction(s), an
        amended brief that complies with either former § 1.192 or § 41.37(c)
        would be acceptable.
        If appellant reinstates the appeal on or after the effective date, the
        second appeal brief must be in compliance with the requirements of
        §41.37(c).
December 8, 2004                                                                    73
                                     Practice Before the BPAI
                                       Appeal Brief - § 41.37
Content and format of the appeal brief (§ 41.37)
       The brief must contain the following items (§ 41.37(c)):
         i.    Real party in interest (similar to former § 1.192).
                   A statement identifying by name the real party in interest even if the party
                   named in the caption of the brief is the real party in interest.
         ii.   Related appeals and interferences (similar to former § 1.192).
                   Identification of all other prior and pending appeals, interferences or judicial
                   proceedings which may be related to, directly affect or be directly affected by
                   or have a bearing on the Board’s decision.
         iii. Status of claims (similar to former § 1.192).
                   The status of all the claims in the proceeding (e.g., rejected, allowed or
                   confirmed, withdrawn, objected to, canceled) and an identification of the
                   appealed claims.
December 8, 2004                                                                                  74
                                       Practice Before the BPAI
                                        Appeal Brief - § 41.37
The brief must contain the following items (§ 41.37(c)) (continued):
iv. Status of amendments (same as former § 1.192).
                   A statement of the status of any amendment filed subsequent to final rejection.
v.      Summary of claimed subject matter (replacing “summary of invention”).
           A concise explanation of the subject matter defined in each of the
           independent claims involved in the appeal,
                      Must refer to the specification by page and line number, and to the drawing,
                      if any, by reference characters.
                   For each independent claim involved in the appeal and for each
                   dependent claim argued separately,
                      Every means plus function and step plus function must be identified, and
                      The structure, material, or acts described in the specification as
                      corresponding to each claimed function must be set forth with reference to
                      the specification by page and line number, and to the drawing, if any, by
                      reference characters.
December 8, 2004                                                                                     75
                                       Practice Before the BPAI
                                        Appeal Brief - § 41.37
 The brief must contain the following items (§ 41.37(c)) (continued):
 vi. Grounds of rejection to be reviewed on appeal (replacing “issues for
      review” and “grouping of claims”).
                   Example: Claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being
                   anticipated by U.S. Patent No. X.
 vii.    Argument (has been revised).
                   A separate heading is required for each ground of rejection.
                   Any claim(s) argued separately should be placed under a subheading.
                   A statement which merely points out what a claim recites will not be considered
                   an argument for separate patentability of the claim.
                   When multiple claims subject to the same ground of rejection are argued as a
                   group, the Board may select a single claim from the group to decide the appeal
                   with respect to the group of claims as to the ground of rejection on the basis of
                   the selected claim alone.
December 8, 2004                                                                                  76
                             Practice Before the BPAI
                              Appeal Brief - § 41.37

    The brief must contain the following items (§ 41.37(c)) (continued):

    viii. Claims appendix (similar to former § 1.192).
               A copy of the claims involved in the appeal.
    ix. Evidence appendix (new)
               Copies of any evidence entered and relied upon in the appeal.
    x.    Related proceedings appendix (new)
               Copies of decisions rendered by a court or the Board in any
               proceeding identified in the related appeals and interferences
               section.


December 8, 2004                                                                77
                                Practice Before the BPAI
                                 Appeal Brief - § 41.37
   Non-compliant appeal briefs (§ 41.37(d))
     If a brief does not comply with the requirements set forth in
     § 41.37, the appellant will be notified of the reasons for
     noncompliance.
          Appellant will be given 1 month or 30 days from the mailing of
           the notification of non-compliance, whichever is longer, to file an
           amended brief. See §41.37(d).
          The time period for filing the amended brief is extendable under:
             • §§ 1.136(a) and (b) for patent applications (e.g., may extend
               up to five months after the two month time period); and
             • § 1.550(c) for ex parte reexamination proceedings. See
               §41.37(e).
December 8, 2004                                                                 78
                              Practice Before the BPAI
                              Examiner’s Answer - § 41.39

        A new ground of rejection is now permitted in an
        examiner’s answer mailed on or after September 13, 2004
        (§41.39(a)(2)).
         A new ground of rejection should be rare, rather than a routine
          occurrence.
        Any new ground of rejection made in an answer must be:
        1. Approved by a Technology Center Director or designee; and
        2. Prominently identified (e.g., a separate heading with all capitalized
            letters) in the following sections of the answer:
           • Grounds of Rejection to be Reviewed on Appeal section; and
           • Grounds of Rejection section.

December 8, 2004                                                                   79
                              Practice Before the BPAI
                              Examiner’s Answer - § 41.39
 Appellant options if examiner's answer includes a new
   ground of rejection (§41.39)
       If an examiner’s answer contains a new ground of rejection,
       appellant must, within two months, either:
       1. Request that prosecution be reopened by filing a § 1.111 reply ; or
       2. Request that the appeal be maintained by filing a reply brief.
         The two month time period under § 41.39 is not extendable under
          §1.136(a).
       If appellant fails to take action, the appeal will be sua sponte
       dismissed as to the claims subject to the new ground of
       rejection.
December 8, 2004                                                                80
                         Practice Before the BPAI
                         Reply Brief - § 41.41
  Appellant has a right to file a reply brief (§ 41.41)
    Appellant may file a reply brief to an examiner’s answer
    within two months from the mailing of the examiner’s
    answer. See § 41.41.
    If examiner provides a supplemental examiner’s answer to
    respond to a reply brief, appellant may file another reply brief
    within two months from the mailing of the supplemental
    examiner’s answer. See § 41.43(b).
    Extensions of time under § 1.136(a) are not available for filing
    a reply brief.

December 8, 2004                                                   81
                              Practice Before the BPAI
 After reply brief - a supplemental examiner's answer is now
     permitted to respond to any new issue raised in the reply
     brief (37 CFR 41.43)
       If the reply brief includes new issues (e.g., appellant for the first time
       argues that the secondary reference is nonanalogous art), the examiner
       may either:
          1. Withdraw the final rejection and reopen prosecution; or
          2. Furnish a supplemental examiner's answer (mailed on or after
               September 13, 2004) responding to any new issue raised in the
               reply brief.
       A Technology Center Director or designee must approve every
       supplemental examiner’s answer.
       A supplemental examiner’s answer responding to a reply brief may not
       include a new ground of rejection.
December 8, 2004                                                                82
                         Practice Before the BPAI
                         Appellant’s Options After a Remand - § 41.50(a)(2)

          If a supplemental examiner’s answer is written after a BPAI
          remand, appellant may request that prosecution be
          reopened pursuant to § 41.50(a)(2) if:
          1.       The remand by the Board is for further consideration of a
                   rejection; and
          2.       The date of the remand is on or after the September 13, 2004.
          Appellant may not request that prosecution be reopened:
          1.       If the Board remands the application prior to September 13,
                   2004; or
          2.       If the Board remands the application for a reason other than for
                   further consideration of a rejection.


December 8, 2004                                                                      83
                   Practice Before the BPAI
                   Appellant’s Options After a Remand - § 41.50(a)(2)

       Appellant must, within two months from the mailing of a
       supplemental examiner’s answer written in response to a
       remand by the Board for further consideration of a
       rejection, either:
       1. Request that prosecution be reopened by filing a reply § 1.111, or
       2. Request that the appeal be maintained by filing a reply brief.
         The two month time period under § 41.50(a)(2) is not extendable
           under § 1.136(a).
       If appellant fails to take action, the appeal will be sua sponte
       dismissed as to the claims subject to the rejection for which
       the Board has remanded for further consideration.
       See §41.50(a)(2).

December 8, 2004                                                               84
                         Practice Before the BPAI
                         Suggesting an interference - § 41.202
      Suggesting an interference is proposing rejection of
         someone else's claim, requiring precision in the
         statement of the rejection (37 CFR 41.202(a))
            The claimed inventions must be the same: Claim A would
            anticipate or render obvious the subject matter of claim B and
            vice versa.
            Each "same" invention defines a count.
            Every claim involved in the interference must be anticipated by,
            or obvious over, a count.
            There must be an explanation of why the targeted application or
            patent will lose under 35 U.S.C. 102(g)(1).

December 8, 2004                                                               85
                   Practice Before the BPAI
                   Suggesting an interference - § 41.202 (cont.)

           A patentee cannot suggest an interference directly (see
           § 41.202(b)).
           An examiner may require an applicant to add an
           interfering claim: failure to comply will result in forfeiture
           of the subject matter of the proposed claim.
           A showing of priority may show why the applicant was
           first or why the targeted application or patent is not
           entitled to its effective filing date.


December 8, 2004                                                            86
                              Practice Before the BPAI
                              Effect of judgment - § 41.127

           Judgment:
              Ends the interference
              Is required for judicial review
           Adverse judgment:
              Finally disposes of a claim
              Creates an estoppel within the Office from taking action
               inconsistent with the judgment
                   • including remedies that could have been, but were not, sought during
                     the interference
           May include a recommendation to the examiner for
           further action
December 8, 2004                                                                            87
                                  Practice Before the BPAI
     Subpart A – General Provisions:
             Policy - § 41.1.
             Definitions - § 41.2.
             Petitions - § 41.3.
             Timeliness - § 41.4.
             Counsel - § 41.5.
             Public availability of Board records - § 41.6.
             Management of the record - § 41.7.
             Mandatory notices - § 41.8.
             Action by owner - § 41.9.
             Correspondence addresses - § 41.10.
             Ex parte communications in inter partes proceedings - § 41.11.
             Citation of authority - § 41.12.
             Fees - § 41.20.
December 8, 2004                                                              88
                             Practice Before the BPAI
                             Mandatory Notices - § 41.8

            In patent appeals and contested cases, appellant/party
            must notify the Board of any change to the real party-in-
            interest within 20 days of the change.
            In patent appeals and contested cases, appellant/party
            must notify the Board of any additional judicial or
            administrative proceeding that could affect, or be
            affected by, the Board proceeding that the
            appellant/party becomes aware of within 20 days of
            becoming aware of the additional judicial or
            administrative proceeding.
December 8, 2004                                                        89
                                Practice Before the BPAI
                                Correspondence Address - § 41.10

         Correspondence in an ex parte appeal and an inter partes
         reexamination should be mailed to the following address:
                   Board of Patent Appeals and Interferences
                   United States Patent and Trademark Office
                   PO Box 1450
                   Alexandria, Virginia 22313-1450
         Correspondence in a contested case (which includes an interference)
         should be mailed to the following address:
                   Mail Stop INTERFERENCE
                   Board of Patent Appeals and Interferences
                   United States Patent and Trademark Office
                   PO Box 1450
                   Alexandria, Virginia 22313-1450

December 8, 2004                                                               90
                   Practice Before the BPAI
                   Ex Parte Communications in Inter Partes Proceedings - § 41.11



         No ex parte communication about an inter partes
         reexamination or about a contested case with a
         Board member, or with a Board employee assigned
         to the proceeding, is permitted.




December 8, 2004                                                             91
                            Practice Before the BPAI
                            Citation of Authority - § 41.12

         Citations to authority must include:
          For any U.S. Supreme Court decision, a United States
           Report citation;
          For any decision other than U.S. Supreme Court
           decision, parallel citation to both the West Reporter
           System and Unites States Patents Quarterly, whenever
           the case is published in both; and
          Pinpoint citations whenever a specific holding or portion
           of an authority is invoked.

December 8, 2004                                                       92
                    III.    Power of Attorney and Assignment
                            Practice Changes

                   Revision of Power of Attorney and Assignment Practice,
                   Final Rule, 69 Fed. Reg. 29865 (May 26, 2004), 1283 Off.
                   Gaz. Pat. Office 148 (June 22, 2004).
                   Effective Date: June 25, 2004.



December 8, 2004                                                              93
                     Why is Power of Attorney Important?


    An attorney or agent who does not have a POA may
    not:
       Change the correspondence address or sign a power to
        inspect (except where an executed oath or declaration has
        not been filed, and the practitioner filed the application);
       Expressly abandon the application without filing a continuing
        application; or
       Sign a terminal disclaimer.

December 8, 2004                                                   94
                   Power of Attorney; New 37 CFR 1.32

    A power of attorney (§ 1.32(b)):
       Must be in writing,
       Name one or more representatives in compliance with §
        1.32(c),
       Give the representative power to act on behalf of the
        principal, and
       Be signed by the applicant for patent (§ 1.41(b)) or the
        assignee of the entire interest of the applicant


December 8, 2004                                                   95
                    Power of Attorney; Name Appropriate
                    Representatives

      If POA was filed on or after June 25, 2004, the POA
      must comply with § 1.32(c). Representatives who may
      be appointed:
        (1) one or more joint inventor;
        (2) up to ten registered patent attorneys or registered
         patent agents (if POA filed on or after June 25, 2004 unless
         in PCT application that has not entered the national stage);
         or
        (3) those registered patent practitioners associated with a
         Customer Number.
December 8, 2004                                                    96
                   Power of Attorney; Up to Ten Practitioners


    If a POA filed on or after June 25, 2004 names more than
    ten patent practitioners:
      The power of attorney must be accompanied by a separate
       paper indicating which ten patent practitioners named in the
       power of attorney are to be recognized by the Office as being
       of record in application or patent to which the power of
       attorney is directed.
      If there is no separate paper accompanying the power of
       attorney, no power of attorney will be entered.
December 8, 2004                                                  97
                   Power of Attorney; New 37 CFR 1.32(c)

      The separate paper can be signed by one of the
      attorneys or agents of record, by a patent attorney or
      agent acting in a representative capacity, the assignee,
      acting pursuant to 37 CFR 3.73(b), or by all of the
      applicants.
      The separate paper cannot request that a Customer
      Number be used instead, only the applicant or
      assignee can give power of attorney to a Customer
      Number.
December 8, 2004                                             98
                   Recent Changes to Filing Receipts

   The filing receipt now
   has an indication of
   the POA. “None” will
   be printed if POA was
   not filed or did not
   comply with 37 CFR
   1.32. Only ten will be
   printed, even if POA
   filed before June 25,
   2004.


December 8, 2004                                       99
                   Recent Changes to Filing Receipts


   The filing receipt also
   has a new sentence
   required by WIPO
   Standard 10/C.




December 8, 2004                                       100
                       Associate Power of Attorney


          37 CFR 1.34(b) was eliminated effective June 25, 2004.
             An associate POA filed after this date will not be entered.
             Associate Powers of Attorney filed before the effective date
              of the rule change will continue to have effect.
             Customer Number practice allows the list of patent
              practitioners associated with an application to be changed
              easily




December 8, 2004                                                             101
                   Acting in a Representative Capacity
                   § 1.34
      A registered patent attorney or patent agent not of record but
      acting in a representative capacity must specify his/her:
         Registration number
         Name (new requirement)
         Signature
      Use sample form “Authorization to Act in a Representative
      Capacity” PTO/SB/0084 to expressly authorize another
      practitioner to conduct an interview (available at
      www.uspto.gov, on the forms page;
      http://www.uspto.gov/web/forms/sb0084.pdf)
December 8, 2004                                                       102
                   For Additional Information

           Consult frequently asked questions posted at:
             http://www.uspto.gov/web/offices/pac/dapp/poafaqs.
              htm
           E-Mail: PatentPractice@uspto.gov
           Call: (571)272-7701




December 8, 2004                                                   103
                   Thank You




December 8, 2004               104

				
DOCUMENT INFO
Description: Power of Attorney Paper document sample