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Final Rule: Changes to Patent Practice
and Procedure
Robert J. Spar
Director,
Special Program Law Office
Deputy Assistant Commissioner
for Patent Policy & Projects
U.S. Patent & Trademark Office
Final Rule: Changes to Patent Practice
and Procedure
ï Effective Date: December 1, 1997
ï Published in the Federal Register
62 Fed. Reg. 53131 (October 10, 1997)
ï Published in the Official Gazette
1203 Off. Gaz. Pat. Office 63 (October 21, 1997)
ï Errata:
ñ 62 Fed. Reg. 61235 (November 17, 1997)
ñ 1204 Off. Gaz. Pat. Office 90 (November 25, 1997)
ï Change to ß 1.53(d): _____Fed. Reg. ___; ___ O.G. ____
Rev.7 2
Notebook Materials
1. Changes to Patent Practice and Procedure - Final Rule
and Index of Final Rule
2. Subject Matter Summary I - Highlights
3. Subject Matter Summary II - Condensed
4. Subject Matter Summary III - Detailed
5. Rule-by-Rule Summary IV
6. Training Slides
7. Application Filing Forms
8. Questions and Answers
9. Selected Form Paragraphs for Examiner Use
10. CPA Application Processing Flowchart
11. Reissue/Reexam Amendment Handout
3
Implementation
General Approach:
Treat papers filed prior to 12/1/1997 in the
most favorable way possible for the
applicant.
Website: www.uspto.gov
Supplemental Qís & Aís, notices
Revised filing forms - now in 2 formats
4
Introduction to the Patent
Practice and Procedure Changes
Topic 1. Application Filing ÖÖÖ.ÖÖ.6
Topic 2. Deceptive Intent ÖÖ.ÖÖÖ..22
Topic 3. Appeal Process ÖÖÖ.ÖÖÖ27
Topic 4. Time-to-Reply ÖÖÖ.ÖÖÖ.31
Topic 5. Miscellaneous ÖÖ.ÖÖÖÖ..36
SummariesÖÖÖÖÖÖÖÖ...ÖÖÖÖ.39
5
Application Filing - 37 C.F.R. ß 1.53
Major Changes
Entire rule substantially revised
ï All applications will be filed under ß 1.53
ï Filing under ß 1.60 and ß 1.62 (FWC) abolished
ï Applications similar to ß 1.60 filed under ß1.53(b)
ñ with a copy of the prior oath/dec under ß 1.63
ñ with the same or fewer inventors - ß1.53(b)(1)
ï Applications similar to FWCs (ß 1.62) filed as
CPAs under ß 1.53(d)
6
1. Application Filing
Application Filing - 37 C.F.R. ß 1.53
Paragraph Overview
ï ß 1.53(c) Provisional Applications
ï ß 1.53(d) Continued Prosecution Applications - CPAs
ñ Former FWCs (Rule 62)
ñ Not for CIPs
ï ß 1.53(b) Everything else*
ñ new applications, with new oath/dec
ñ continuation/divisional applications, with copy of oath/dec
ñ CIPs, with new oath/dec
* except PCT applications
7
1. Application Filing
Application Filing - 37 C.F.R. ß 1.53(b)
Dec.'s
Oath and Declaration Requirements
ï Only ß 1.53(b) filings require an oath/dec
ï Oath/dec may be an orig. or copy (ß 1.63(d))
ñ copy from a prior application, or
ñ newly executed for this application
ï Oath/dec need not be submitted on filing
(ß1.53(f))
ï Newly executed oath/dec needed for CIP
application or a non-continuing application
8
1. Application Filing
Application Filing - 37 C.F.R. ß 1.53(b)
Specís
Specification Requirements for Cont/Div cases
using a copy of the Oath/dec (ß 1.63(d))
ï Commandment: May not contain new matter
ï ìTrue Copyî requirement of Rule 60 dropped
ï May be edited, rearranged, reformatted - whatever
ï Examinersí responsibilities concerning the status as
a continuing case stay the same
Specification should include an incorporation-by-
reference of prior application (to avoid inadvertent
loss of subject matter)
9
1. Application Filing
Application Filing - 37 C.F.R. ß 1.53(b)
Wreckís
ï Cases designated as Rule 60- Treat as
ß 1.53(b)
ï ß 1.53(b) is the default home for filing;
unless specifically designated as a CPA,
a ß 371 or a provisional application
ï Problem cases will end up under this
paragraph
10
1. Application Filing
Application Filing - 37 C.F.R. ß 1.53(d)
CPAs
Continued Prosecution Applications
ï Replace Rule 62 FWC
ï Only Basic Requirement
ñ Cannot include new matter
Note: Immediate prior application may be filed
before, on or after 6/8/95
ñ See ___ F.R.___; ___ O.G.____
Rev.7 11
1. Application Filing
Application Filing - 37 C.F.R. ß 1.53(d)
CPAs (cont)
CPA Application Attributes
ï Uses the file jacket and contents of the prior
application
ï Uses same application number as prior application
ï Prior application is expressly abandoned as of
filing date of CPA request
12
1. Application Filing
How to Recognize a CPA
ï Application File Wrapper:
(a) Typical Contents Entry -
__#11_ Request for CPA 12/15/98
(b) Face of File: ìCPAî label
CPA
ï PALM: ìContentsî column of 2952 screen - look for
ìACPAî(continuation) or ìDCPAî (divisional)
ï Form paragraph will be in the first action of CPA
ï If Notice of Abandonment is received- CPA was not
established!
ï Patent will include statement re: CPA & 20 yr. patent term
Rev.7 13
1. Application Filing
Application Filing - 37 C.F.R. ß 1.53(d)
CPA (cont)
CPA Filing
ï May be filed by fax (ß 1.6(d)(3)) or hand
delivered to group
ï Certificate of transmission/mailing under ß 1.8
does not apply to filing of CPA
ï Filing date is date of receipt of complete
facsimile transmission
14
1. Application Filing
Application Filing - 37 C.F.R. ß 1.53(d)
CPA (cont)
CPA Processing in PTO:
ï Processing will be performed in Group where prior
application assigned
ï No new filing receipt issued
ï No Office action or interview until filing fees paid.
15
1 Application Filing
Application Filing - 37 C.F.R. ß 1.53(d)
CPA (cont)
CPA: 35 USC 120 Benefits
ï The first sentence of the specification need not,
and may not, refer to the prior application.
ï The effective filing date is at least the filing date
of the parent.
16
1. Application Filing
Carry-Over Documents
CPA (cont)
Papers in the prior application that do CARRY
OVER to, and will be considered in, a CPA:
ï Affidavits/declarations under 37 C.F.R. ßß 1.130-1.132
ï Information Disclosure Statements
ï Terminal Disclaimers
ï Petitions under 37 C.F.R. ß 1.48
ï Priority claims (foreign and domestic)
ï Deposit Account charge authorizations
ï Elections
ñ unless the CPA is a divisional or indicates otherwise
ï Ownership submissions under 37 C.F.R. ß 3.73(b)
17
1. Application Filing
Carry-Over Documents
CPA (cont)
Papers in the prior application that do NOT
carry-over to a CPA
ï Small Entity Status
ñ small entity status must be specifically
established in a continuing application, but may
be established by payment of the small entity
basic filing fee
ï Elections
ñ where the CPA is a divisional or otherwise
indicates that the election in the prior application
does not carry over
18
1. Application Filing
Application Filing - 37 C.F.R. ß 1.41(a)
Inventorship
The executed oath/dec names the inventorship:
ï Inventorís name is no longer needed for a filing date
ï Executed oath/dec sets the names of the inventors
ï If no name of an actual inventor is provided with the
application papers, an identifier consisting of
alphanumeric characters is requested (e.g., attorney
docket number)
19
1. Application Filing
Application Filing - 37 C.F.R. ß 1.41(a)
Inventorship
Inventorship in provisional application identified in:
ï Cover sheet; or in the
ï Application papers under ß 1.53(c), IF the cover
sheet was not filed during pendency of the
provisional application; or in a
ï Petition under ß 1.41(a)(2) for change of names or
inventors.
20
1. Application Filing
Application Filing Changes:
ï 37 C.F.R. ß 1.60 and 1.62 eliminated
ï 37 C.F.R. ß 1.63(d) provides for the use of a copy
of the executed oath/declaration from a prior
application in a continuation or divisional (filed
under 37 C.F.R. ß 1.53(b))
ñ Replaces practice under 37 C.F.R. ß 1.60
ï 37 C.F.R. ß 1.53(d) provides for Continued
Prosecution Applications (CPAs)
ñ Replaces practice under 37 C.F.R. ß 1.62
21
1. Application Filing
Topic 2:
Deceptive Intent
ï 37 C.F.R.ß 1.4 Verification of correspondence
ï 37 C.F.R.ß 1.48 & 1.324 Correction of inventorship
ï 37 C.F.R.ß 1.171 & 1.175 Reissues.
ï 37 C.F.R.ß 3.73(b) Establishing right of assignee to
prosecute.
ï 37 C.F.R.ß 1.28 Small Entity Status
22
2. Deceptive Intent
Deceptive Intent - 37 C.F.R.ß 1.4
37 C.F.R. ß 1.4 and 10.18:
ï Puts inventors on the same plane as attorneys and
agents
ï An explicit verification is not required for certain
submissions, e.g. small entity statements (ß 1.27),
correction of inventorship (ß 1.48), substituted
specifications (ß 1.125).
ï The verification requirement is retained in certain
sections (e.g., 37 C.F.R. ß 1.63 oaths, ßß 1.130,
1.131, and 1.132 affidavits).
23
2. Deceptive Intent
Deceptive Intent - 37 C.F.R.ß 1.48 & 1.324
Correction of inventorship in applications &
patents
ï Eliminated factual showing requirements
ï Eliminated diligence requirements
ï Narrowed and changed parties who must submit
statements
ñ 37 C.F.R.ß 1.48: statements required only from
inventors to be added to or deleted from application
ñ 37 C.F.R.ß 1.324: statements re deceptive intent only
required from inventors added or deleted
24
2. Deceptive Intent Issues
Deceptive Intent - 37 C.F.R. ß 3.73
The assignee's ownership interest is established
by filing a statement under 37 C.F.R.
ß 3.73(b) :
37 C.F.R. ß 3.73(b) no longer requires that an
assignee
ñ specifically state that the evidentiary documents
have been reviewed, and
ñ certify that title is in the assignee seeking to take
action
25
2. Deceptive Intent Issues
Deceptive Intent - 37 C.F.R. ß 1.28 (a)(2)
Small Entity Status
The payment of the small entity basic
statutory filing fee will be treated as the
required reference to a small entity
statement in a prior application or in a
patent in:
- continuing applications, and
- reissue applications
26
2. Deceptive Intent Issues
Topic 3:
Appeal Process
ï 37 C.F.R. ß 1.191 Notice of Appeal
ï 37 C.F.R. ß 1.193 Examiner's Answer &
Reply Brief
ï 37 C.F.R. ß 1.196 Decision by the Board
27
3. Appeal Process
Appeal Process - 37 C.F.R. ß 1.193
Examinerís Answer
While ß 1.193 precludes New Grounds of rejection
in an Examinerís Answer,
IF
1. an amendment under ß1.116 is submitted, and
2. advisory action indicates the ß 1.116 amendment would be entered for appeal
purposes, and which individual rejections in final would be used to reject the
new or amended claims,
THEN
3. Appeal brief must address the indicated rejections, and
4. Examiner's Answer may include such rejections
Prosecution reopened for new ground(s) of rejection.
28
3. Appeal Process
Appeal Process - 37 C.F.R. ß 1.193
Where prosecution is reopened, under ß 1.193(b)(2),
appellant must:
ï file an appropriate reply to the Office action; or
ï request reinstatement of the appeal
ñ request must be accompanied by a supplemental appeal brief
ï reinstatement option will avoid need for a final Office
action when applicant chooses to go back to the Board
of Appeals
29
3. Appeal Process
Appeal Process - 37 C.F.R. ß 1.193
ï Timely reply brief always entered--ß 1.193(b)(1)
ï New amendments, affidavits, declarations, or
exhibits are not entered except as permitted by
ßß 1.116 and 1.195.
ï Examiner must:
ñ acknowledge and enter the reply brief; or
ñ reopen prosecution to respond to the reply brief
ï Supplemental examinerís answer not permitted
30
3. Appeal Process
Topic 4:
Time to Reply
ï 37 C.F.R. ß 1.135 Abandonment for failure
to reply within time period.
ï 37 C.F.R. ß 1.136 Extensions of time.
ï 37 C.F.R. ß 1.137 Revival of abandoned
application or lapsed patent.
31
4. Time-to-Reply
Time to Reply - 37 C.F.R. ß 1.135(c)
Treatment of bona fide but incomplete replies to non-
final Office action.
May be accepted and treated by:
1) Acting on the merits of the reply; or
2) Requiring the omission to be supplied prior to
acting on the merits of the reply.
- new extendible time period (not time limit)
may be given
- remaining time period if sufficient
32
4. Time-to-Reply
Time to Reply - 37 C.F.R. ß 1.135(c)
Exception:
ï Does not apply after a final Office action, not even if the
omission is:
ñ 1) a lack of a signature; or
ñ 2) a lack of additional claims fee
ï An applicant must supply any omission in a reply to a final
Office action within the period for reply to the final Office
action.
33
4. Time-to-Reply
Time to Reply - 37 C.F.R. ß 1.136
Extensions
ï The cap is now five months
ï Separate and specific petition for extension is
no longer needed.
ñ a petition will be construed whenever possible
ï Five Months is possible for
1) one month restrictions
2) one month periods under ß 1.135(c)
3) appeal briefs (up to 7- not subject to stat. period)
34
4. Time-to-Reply
Time to Reply - 37 C.F.R. ß 1.137
Abandonment and Revival:
ï Removal of one-year cap for filing a petition based
on unintentional delay. (37 C.F.R. ß 1.137(b))
ñ Emphasizes that the entire delay must have been
unintentional to preclude intentional delay or abuse of the
revival procedure (e.g., submarine patents).
ñ Long abandoned applications will receive greater scrutiny
ï Terminal disclaimer required for all applications not
subject to 20 year term
35
4. Time-to-Reply
Topic 5:
Miscellaneous
ï 37 C.F.R. ß 1.14(a)(2) Access to file
ï 37 C.F.R. ß 1.59 Petitions to expunge
ï 37 C.F.R. ß 1.121 Manner of making amendments
ï 37 C.F.R. ß 1.125 Substitute specification
ï 37 C.F.R. ß 1.152 Design patent applications
ï 37 C.F.R. ß 1.291 Protests by the public against
pending applications
36
5. Miscellaneous
Miscellaneous - 37 C.F.R. ß 1.121
Manner of Making Amendments
ï Applications other than reissues 37 C.F.R. ß 1.121(a)
ñ (a) (1) - spec
ñ (a) (2) - claims
ñ (a) (3) - drawings
ï Reissue Applications 37 C.F.R. ß 1.121(b)
ñ (b) (1) - spec
ñ (b) (2) - claims
ñ (b) (3) - drawings
ï Reexaminations 37 C.F.R. ß 1.121(c)
37
5. Miscellaneous
Miscellaneous - 37 C.F.R. ß 1.121
ï No change in substance for applications other than
reissues - 37 C.F.R. ß 1.121(a)
ï Reissue practice made to conform to
reexamination - 37 C.F.R. ß 1.121(b)
ï Disclosure must be amended when required to
ensure substantial correspondence between the
specification (including the claims) and the
drawings. 37 C.F.R. ßß 1.121(a)(5), (b)(4),
1.530(d)(7)
38
5. Miscellaneous
Filing of Applications (summary)
ï All applications under 35 U.S.C. ß 111 filed under 37
C.F.R. ß 1.53
ñ 37 C.F.R. ßß 1.60 and 1.62 eliminated
ï Continuations/divisionals may be filed using copy of an
oath/dec. from prior application
ï P.O. Address must be in oath/dec.
ï Names of the inventors not needed for a filing date
ñ The inventorship is named in the executed oath/dec.
39
Summary
Filing of Applications (summary)
ï Continued Prosecution Application (CPA) under 37 C.F.R.
ß 1.53(d)
ñ Immediate prior application may be filed before, on or after
June 8, 1995*
ñ No C-I-P permitted
ñ Same application number/file jacket as prior application
ñ No ìfirst sentenceî reference to prior application
ï Front of file jacket will not show CPA continuing data
ñ Will be processed entirely by Group
ñ May be filed by facsimile
*Note: See ____F.R.____; ____ O.G._____
Rev.7 40
Summary
Deceptive Intent (summary)
ï Separate verification requirement eliminated in a
number of sections
ï Requirements for a reissue oath/dec. simplified
ï Requirements for a petition to correct inventorship
simplified
ï The payment of the small entity filing fee in a
continuing or reissue application substitutes for a
small entity statement (or reference to the statement
in prior application or patent)
41
Summary
Appeals (summary)
ï No new ground of rejection in an examinerís answer but
permitted to apply individual rejections of final to
claims of ß1.116 amendment
ï Any new ground of rejection on appeal or response to a
reply brief must be via reopening of prosecution
ñ The applicant may request reinstatement of the
appeal in reply to reopening of prosecution
ï Reply briefs must be admitted if timely
ï Supplemental Examinerís Answer not permitted
42
Summary
Time Frames (summary)
ï Applicants may be given an extendible time period to
supply an omission to a bona fide but incomplete reply
to a non-final action
ï Extensions for up to five (5) months now permitted
under 37 C.F.R. ß 1.136(a))
ï Fee authorization or fee itself is a constructive petition
under 37 C.F.R. ß 1.136(a)
ï One year filing period requirement for revival based
upon unintentional delay (37 C.F.R. ß 1.137(b))
eliminated
ï Multiple prior art protests permitted if timely
43
Summary
Final Rule: Changes to the Patent
Practice and Procedure
Effective Date:
December 1, 1997
Thank you.
44
Summary
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