Get documents about "Recent Rule Changes
Document Sample
Recent Significant Rule Makings and
Changes in USPTO Practice
San Diego IPLA
June 3, 2004
Robert Spar
Director,
Office of Patent Legal Administration
(703) 308-5107
Bob.Spar@uspto.gov
June 4, 2004 1
TOPICS
Final Rules (http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html):
1. Patent Term Ext. and Adjustment (35 USC 154) – (4/04)
2. Implementing Public Law 107-273 (2002) and Ancillary Matters –
(Inter Partes Reexam) – (12/03)
3. Patent Cooperation Treaty – (10/03; effective 1/04)
4. Power of Attorney Practice and Revisions to Assignment Rules –
(5/04)
5. Image File Wrapper (IFW) – (Revised Amendment Practice) –
(effective 7/30/03)
6. Elimination of CPA Practice (effective 7/14/03)
June 4, 2004 2
TOPICS
OG Notices (http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html):
1. When a Notice of Foreign Filing is Required – (7/1/03)
2. Reexamination (Portola) Guidelines – (7/1/03; effective 11/2/02)
3. Information Disclosure Statements May Be Filed Without Copies of U.S.
References (8/5/03; effective for patent applications filed after 6/30/03)
4. USPTO to Cease Supplying Copies U.S. Patent References Cited by the
Office (E-Patent Reference) - (12/23/03 and 5/18/04)
5. Unity of Invention Study - (5/20/03)
6. Correspondence Filed by Individuals Whose Names Have Been
Removed From The Register - ( 11/11/03)
7. Documents Required by the Office of Patent Publication – 1.312 Waiver
(3/23/04)
8. Copies of File Contents Available on Compact Disc – (1/27/04) 3
June 4, 2004
TOPICS
OG Notices (http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html):
9. EPO Resumes Competence to Act as a PCT Authority – (12/30/03)
10. Patent Application Publications May Now Include Amendments -
(4/13/04)
11. Application Data Sheets Encouraged- (4/13/04)
12. Filing Confidential Information Pursuant to MPEP 724.02 – (5/18/04)
13. Centralized Delivery of Hand-Carried Papers and Facsimile
Transmissions – (effective 12/01/03, 3 notices – 3/23/04, 2/24/04,
10/28/03)
14. Mail Stops – (2 notices; 5/18/04, 5/25/04)
15. Revised Procedures for Express Abandonments - (5/25/04)
16. Lengthy Tables – (5/18/04)
17. Request for Alert Concerning Submitted Petitions – (5/04)
18. New Street Address for the Customer Window (6/04)
June 4, 2004 4
Final Rule: Patent Term Ext. and Adjustment
(35 USC 154)
Revision of Patent Term Extension and Patent Term
Adjustment Provisions (RIN 0651-AB71) 1282 Off.
Gaz. Pat. Office 100 (May 18, 2004), 69 Fed. Reg.
21704 (Apr. 22, 2004), (final rule).
June 4, 2004 5
Final Rule: Patent Term Ext. and Adjustment
(35 USC 154)(4/04)
A remand by the BPAI shall be considered a decision reversing an
adverse determination of patentability for patent term adjustment and
patent term extension purposes, if:
– The remand is by a panel of the BPAI
– The remand is the last action by a BPAI panel in the application; and
– No request for continued examination under 35 U.S.C. 132(b) (RCE per
§ 1.114) is filed after the remand and before the examiner’s next action under
35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151.
Retroactivity: A request for reconsideration to obtain the benefit of this
change will be timely filed in previously-issued patents if filed by July
21, 2004.
June 4, 2004 6
Final Rule: Patent Term Ext. and Adjustment
(35 USC 154)
Rule 1.705(d) is amended:
– The period of time in which a patentee may request reconsideration of
the patent term adjustment is changed from within thirty days of the
date the patent issued to within two months, which is non-extendible.
– Reconsideration may now be requested if the patent indicates a
revised patent term adjustment relative to the patent term adjustment
indicated on the notice of allowance, instead of only when the patent
issues on a date other than that projected.
– Provides that any request for reconsideration under § 1.705(d) that
raises issues that were raised, or could have been raised, in an
application for patent term adjustment under § 1.704(b) shall be
dismissed as untimely as to those issues.
June 4, 2004 7
Final Rule: Implementing Public Law 107-273
(2002) and Ancillary Matters
Changes to Implement the 2002 Inter Partes
Reexamination and other Technical Amendments to
the Patent Statute (RIN 0651-AB57) 1278 Off. Gaz.
Pat. Office 218 (Jan. 20, 2004), 68 Fed. Reg. 70996
(Dec. 22, 2003), (final rule).
June 4, 2004 8
Final Rule: Implementing Public Law 107-273 (2002) and
Ancillary Matters – Inter Partes Reexam (12/03)
Pursuant to Public Law 107-273, §13106, the requester of an
inter partes reexamination may now:
– (1) Appeal adverse decision of Board of Patent Appeals and
Interferences to Court of Appeals for Federal Circuit, and
(2) Participate in Patent Owner’s Appeal to the Court.
– Rules 1.983 and 1.304 are amended to implement §13106 of
Public Law 107-273.
– Patent owner/ requester cross appeals are permitted.
– Patent owner and requester may participate in each other’s
Appeals to the Court.
– Provides level playing field for appeal in inter partes reexam.
– Does not apply to any inter partes reexam commenced prior
June 4, 2004
to November 2, 2002. 9
Final Rule: Patent Cooperation Treaty
Effective Date: January 1, 2004
January 2004 Revision of Patent Cooperation Treaty
Application Procedure, 68 Fed. Reg. 59881 (October
20, 2003)(final rule).
June 4, 2004 10
PCT: Expanded Search Procedure (1/04)
When establishing the International Search Report,
the ISA will also establish a Written Opinion
ISA Written Opinion to be adopted by the IPEA as the
first Examination Written Opinion
If no Demand is filed, the ISA Written Opinion will be
issued at 30 months by the International Bureau as an
IPRP* with equal status to the IPER**
*IPRP = International Preliminary Report on Patentability (Chapter I
of the Patent Cooperation Treaty).
** IPER = international preliminary examination report
June 4, 2004 11
PCT: Automatic Designation / Election and
Relaxation of Certain Filing Requirements (1/04)
The filing of an International Application will
constitute:
– A designation of all contracting States
– An indication of all types of protection
– An indication of both national and regional filing
Similarly, filing of a Demand will constitute the
election of all designated States
Relaxation of signature and other requirements for filing
June 4, 2004 12
PCT: Designation/Election – Impact (1/04)
All applications will now require naming of applicant/inventors
– Additional possible RO workload issues related to missing
applicant/inventor information and signatures addressed by other
reform initiatives
RO workload reductions due to elimination of precautionary
designations
IPEA workload reductions due to elimination of later elections
June 4, 2004 13
PCT: Fee Structure (1/04)
With the elimination of separate designations there
is no longer a need for the current multiple filing fee
system (i.e., Basic Fee + Designation Fees)
Fee system therefore simplified via a single “flat”
international filing fee
June 4, 2004 14
PCT: Filing Requirements (1/04)
Identifying information (i.e., address, residence, and nationality) for
only one applicant required to avoid the Article 14 sanction of
withdrawal
– Applicant must be entitled to file in that RO
Only the signature of one applicant required to avoid withdrawal
Offices and Authorities may waive the requirement for a Power of
Attorney
– Power of Attorney requirement may not be waived in the case of applicant
initiated withdrawals
National Offices may still require identifying information and
signatures
June 4, 2004 15
PCT: National Stage Reinstatement (1/04)
In accordance with the PLT, PCT Regulations will provide
for reinstatement of National Stage rights in applications
where the 30-month deadline has been missed
Offices will be able to apply either a due care or an
unintentional standard
If contrary to their national law, Offices will be able to take a
reservation to this provision
June 4, 2004 16
PCT: National Stage Reinstatement – Impact (1/04)
Initial impact expected to be minimal as reservation
clause will maintain the status quo
Offices which already have reinstatement (e.g., U.S.
revival practice) will continue
Offices without will take reservation until such time as
their national laws can be amended
June 4, 2004 17
PCT Fee Structure and New Fees (1/04)
New U.S. PCT Fees:
– Transmittal Fee: $300.00
– Search Fee:
• Corresponding § 111(a): $300.00
• No corresponding § 111(a): $1,000.00
• Per additional invention: $1,000.00
– Preliminary examination fee:
• USPTO was ISA: $600.00
• USPTO not ISA: $750.00
• Per additional invention: $600.00 18
June 4, 2004
Final Rule: Power of Attorney Practice
and Assignment Rules
Clarification of Power of Attorney Practice, and
Revisions to Assignment Rules, 69 Fed. Reg.
29865 (May 26, 2004) (final rule).
June 4, 2004 19
Significant Changes Made to Certain Rules
§ 1.32 (New Rule) Power of attorney.
§ 1.33 Correspondence Address; Signature Requirements.
§ 1.34 Acting in a Representative Capacity.
§ 3.24 Requirements for documents and cover sheets relating
to patents and patent applications.
§ 3.25 Recording requirements for trademark applications and
registrations.
§ 3.73 Establishing right of assignee to take action
§ 3.81 Issue of patent to assignee.
June 4, 2004 20
Main Changes
Power of Attorney related changes:
– Limit of ten patent practitioners will be made of record if
Customer Number practice is not used. § 1.32 (new)
– Elimination of Associate Power of Attorney practice. § 1.34
Assignment changes:
– Original assignment document must not be submitted for
recordation because the document submitted for recordation
will no longer be returned. §§ 3.24 & 3.25
June 4, 2004 21
Power of Attorney; New 37 CFR 1.32 (a) & (b)
37 CFR 1.32(a) sets forth the following definitions:
– Power of attorney,
– Principal,
– Revocation, and
– Customer Number (CN)
37 CFR 1.32(b) sets forth power of attorney requirements:
– 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.
June 4, 2004 22
Power of Attorney; New 37 CFR 1.32(c)
A power of attorney must name as representative either:
(1) one or more joint inventor;
(2) up to ten registered patent attorneys or registered patent agents; or
(3) those registered patent practitioners associated with a Customer
Number.
If a power of attorney names more than ten patent practitioners
– 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 no separate paper, no power of attorney will be entered.
June 4, 2004 23
Correspondence Address §1.33(a)
The Office will use the address associated with a
Customer Number if given, over a typed
correspondence address, when more than one
correspondence address is given.
The Correspondence address given in an
Application Data Sheet (§ 1.76) is given priority
over any other correspondence address given.
June 4, 2004 24
Signature Requirements for Amendments
and Other Papers §1.33(b)
Correspondence to the Office must be signed by:
– A registered patent attorney or patent agent of
record appointed in compliance with § 1.32(b)
– A registered patent attorney or patent agent not of
record who acts in a representative capacity under
the provisions of § 1.34
– An assignee as provided for under § 3.71(b)
(unchanged)
– All of the applicants for patent (unchanged)
June 4, 2004 25
Acting in a Representative Capacity § 1.34
Paragraph (b) of § 1.34 has been deleted.
§ 1.34 is now a single paragraph (revising prior § 1.34(a))
limited to acting in a representative capacity.
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
June 4, 2004 26
Acting in a Representative Capacity § 1.34
Associate Power of Attorney practice has been eliminated
(Prior § 1.34(b))
– Customer Number practice allows the list of patent practitioners
associated with an application to be changed easily
– Use sample form “Authorization to Act in a Representative Capacity”
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)
Associate Powers of Attorney filed before the effective date of
the rule change will continue to have effect.
June 4, 2004 27
Assignment: Only Copies Should be
Submitted for Recordation
37 CFR 3.24 (patents) and 3.25 (trademarks) are
amended to provide:
– Only a copy of an original assignment document may be
submitted for recording
– Electronic filing of assignment documents permitted
The Notice of Recordation returned to the applicant
has been revised to reflect the title of the invention
and docket number stored in the Office’s electronic
records, if the notice of recordation is for a single
property (application or patent)
Assignment documents must be submitted on
June 4, 2004
8.5 x11 inch paper or DIN size A4 28
Issuance of Patent to Assignee: Assignment
must be submitted for Recordation
§ 3.81 is amended to modify the practice relating to issuance of
a patent to an assignee
– after payment of an issue fee, a request for a certificate of correction
must be filed in order to obtain issuance of the patent to an assignee.
– if assignment information is submitted after payment of the issue fee,
the patent document will not include the assignment information
• assignment information will be included in a certificate of
correction.
The practice of allowing a patent to issue to an assignee when
an assignment has not been recorded but a statement under
37 CFR 3.73(b) has been filed is discontinued.
June 4, 2004 29
What is a Customer Number?
A Customer Number is a number that may be used
to:
1. Designate the correspondence address of a patent
application (the address associated with the Customer
Number will be used for the correspondence address);
2. Designate the fee address (§ 1.363) of a patent (the fee
associated with the Customer Number will be used for the
fee address); and
3. Designate the power of attorney (a list of registered patent
practitioners associated with the Customer Number will be
recognized as having the power of attorney).
June 4, 2004 30
Why Use A Customer Number?
Using a Customer Number for the Correspondence Address will
allow pro se applicants, or an applicant’s representatives, access
to private PAIR.
The Office highly recommends that all patent practitioners and
applicants have access to private PAIR.
To learn how to obtain a customer number and access private
PAIR contact the Electronic Business Center (EBC)
– Website: www.uspto.gov/ebc;
– Toll Free: (800)786-9199 or (703) 305-3028
– Fax: (703) 308-2840
– E-mail: ebc@uspto.gov
June 4, 2004 31
Why Use Private PAIR?
Private PAIR includes:
IFW Access (added in June 2003) (Coming to public PAIR in Summer 2004)
View Outgoing Correspondence Notifications (added in August 2003)
• Display a list of patent application correspondence, by date, with links to IFW
images
Pre-Grant Publication Review
Submit request for bibliographic data changes online for Pre-Grant Publication
purposes
Download Cited US References
E-Patent Reference (added in December 2003)
Search applications by Customer Number or Attorney Docket Number
Customer Number for Correspondence Address
Submit request for CN Address or Practitioner change online (added in November
2003)
Examiner Name Link
Examiner’s name in application display links to Employee Locator contact
information
June 4, 2004 32
Why Use PAIR?
In addition private PAIR includes (as does public
PAIR):
– View bibliographic data and file history
– View continuity, foreign priority, Pre-Grant
Publication numbers and dates, PTA/PTE history
– Link to Full-Text and Images on the web for patents
and published applications
– Link to Office of Finance website for maintenance fee
statements and payment information
– Search by Class/Subclass/GAU to display
associated Class/Subclass and Group Art Unit.
– Search Employee Locator to display name, phone
number and organization
June 4, 2004 33
Questions?
Contact Electronic Business Center (EBC)
1. Customer Number
• How to obtain a customer number?
• Which form do I use?
• How will I receive my customer number?
2. PKI Certificate
• How do I get access to private PAIR?
• How long does it take to get my codes?
• How to create or recover a profile?
3. Electronic Filing System (EFS)
• I can’t download this software from the website, how do I get this software?
• How do I resolve the errors that I get when I validate in Epave?
• I have XP, how do I do my specification if PASAT is not compatible?
4. Patent Application Information Retrieval (PAIR)
• Why do I get an invalid error when I enter in my case number?
• I forgot my password, how can I gain access to PAIR?
• My company uses proxys on our server, how can I connect to PAIR?
See also PAIR Frequently Asked Questions:
http://pair-direct.uspto.gov/final/images/pair_faq.html
June 4, 2004 34
Final Rule: Image File Wrapper (IFW)
Effective date: July 30, 2003
Changes to Implement Electronic Maintenance of
Official Patent Application Records, 1272 Off. Gaz.
Pat. Office 197 (July 29, 2003), 68 Fed. Reg. 38611
(June 30, 2003)(final rule).
June 4, 2004 35
IFW Implementation (7/03)
The Office continues to implement the Image File Wrapper (IFW)
system which is an image technology system for storage and
maintenance of records associated with patent applications.
All new applications filed since June 30, 2003 are scanned into the
IFW system.
Paper components of pending application file contents (including
the specification, oath or declaration, drawings, information
disclosure statements, amendments, Office actions, and file jacket
notations) will be image scanned into the IFW system.
June 4, 2004 36
IFW Implementation (Continued)(07/03)
The backfile of existing applications will be scanned, and indexed, into
the IFW system.
A schedule for capturing the backfile of existing applications linked to
the movement of art units to the Office’s new location at Carlyle has
been established.
When a paper for an existing application in a designated art unit is
recognized, the paper and the application will be scanned into the IFW
system.
All processing and examination will be performed with the electronic
image files, instead of paper source documents, by all Office
personnel.
June 4, 2004 37
IFW Implementation (Continued)(6/03)
The electronic image files in the IFW system will be
the official records of the applications (the transition
started on 6/30/03).
– See Notification of United States Patent and Trademark Office
Patent Application Records being Stored and Processed in
Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17,
2003).
The image technology system will replace the
standard paper processing of applications.
June 4, 2004 38
IFW Implementation (Continued)(6/03)
Electronic Maintenance of Application Records
– Increases the integrity of the Office records;
– Reduces the potential for loss of records and misfiling;
– Allows parallel processing of the application by various
parts of the Office; and
– Facilitate intra-Office access to an application file and to
other authorized parties.
June 4, 2004 39
IFW Statistics (4/04)
Number of Examiners using IFW
– 3293 Examiners
Number of Art Units Examining in IFW
– 184 GAUs (5 Technology Centers) - 66% of Total
Number of Applications Scanned
– 375,335 New Applications (filed since June 2003)
– 210,746 Backfile Applications (filed before June 30th 2003)
Number of Pages Scanned
– 88,118,627 Pages
June 4, 2004 40
IFW Implementation (Continued)
Applicants may continue to file applications and
correspondence in paper form.
Alternatively, applicants may use the Office electronic filing
system (EFS) for new application filings and certain
information disclosure statement (IDS) submissions.
– Copies of U.S. patents and U.S. patent application
publications are not required under §1.98 if the references
are being submitted in an e-IDS.
June 4, 2004 41
IFW Implementation (Continued)
Applicants may electronically access their
applications in the IFW system via the private side of
PAIR.
The contents of published applications that are in the
IFW system will generally be viewable by the public
through the public side of PAIR in FY04.
The system is consistent with the data processing
system used by the European Patent Office (EPO).
The Office plans to increase information exchange
by leveraging common storage architecture.
June 4, 2004 42
IFW: 37 CFR 1.3, 1.59, and 1.99
The rules have been revised to eliminate
Office’s return of certain papers.
– As part of the implementation of IFW, the
original paper will be disposed in accordance
with a record retention schedule after scanning.
June 4, 2004 43
IFW: 37 CFR 1.9 and 1.14
Section 1.9, “Definitions”, has been amended to clarify
that the word “paper” and “papers” refer to a document or
documents, which may be electronic records or physical
paper sheet(s).
Section 1.14, “Patent applications preserved in
confidence”, has been revised to provide clarity and
expand the rule to provide for electronic files.
June 4, 2004 44
IFW: 37 CFR 1.14(a)
Separate paragraphs in §1.14(a) were established to state what access
or information is available in specific situations:
– Patented applications and statutory invention registrations (SIR).
(§1.14(a)(1)(i))
– Published abandoned applications. (§1.14(a)(1)(ii))
– Published pending applications. (§1.14(a)(1)(iii))
– Unpublished abandoned applications (including provisional
applications) that are identified or relied upon. (§1.14(a)(1)(iv))
– Unpublished pending applications (including provisional applications)
whose benefit is claimed. (§1.14(a)(1)(v))
– Unpublished pending applications (including provisional applications)
that are incorporated by reference, or otherwise identified.
(§1.14(a)(1)(vi))
June 4, 2004 45
37 CFR 1.14
Request for Access
under 37 CFR
1.14(a)(1)(iv)
Applicants are encouraged
to use Form PTO/SB/68
which has been revised to
include explanatory notes
concerning when access is
available.
June 4, 2004 46
IFW: 37 CFR 1.14(b)
Electronic access to an application
– Where a copy of the application papers or access to the
application is available pursuant to §§ 1.14(a)(1)(i)
through 1.14(a)(1)(vi), the Office may at its discretion
provide access only to an electronic copy of the file
contents of the application.
June 4, 2004 47
IFW: 37 CFR 1.52
Papers must not be permanently bound
– Papers must be readily separable for scanned entry into
the image system.
– The use of binder clips or standard office staples will
generally be acceptable.
June 4, 2004 48
IFW: 37 CFR 1.52
Each section of a patent application is required to
start on a separate sheet and include no other
portions of the application or other material.
– The application will be electronically scanned and
each section of the application (e.g., text of the
specification, abstract, claims) will be indexed
separately in IFW.
– Presentation of other material on same page makes
the electronic indexing of the application more difficult.
June 4, 2004 49
IFW: 37 CFR 1.72
Elimination of the prohibition on using the
abstract to interpret the claims
§1.72(b) has been amended to delete the last
sentence in the rule (“The abstract will not be
used for interpreting the scope of the claims.”) to
be consistent with Hill Rom Co. v. Kinetic
Concepts, Inc., 209 F.3d 1337, 1341 n.*, 54
USPQ2d 1437, 1440 n.1 (Fed. Cir. 2000).
June 4, 2004 50
Revised Amendment Practice
37 CFR 1.121
June 4, 2004 51
IFW Implementation:
Revised Amendment Practice 37 CFR 1.121
Effective date: All amendments filed on or
after July 30, 2003 must comply with the
revised 37 CFR 1.121, except amendments to
the specification and claims filed in reissue
applications and reexamination proceedings.
– A sample amendment document and Q’s
and A’s are posted on the USPTO’s
website at
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/
moreinfoamdtprac.htm
June 4, 2004 52
Revised Amendment Practice (Continued)
Major Changes from Notice of Proposed Rule Making :
– Only seven status identifiers are permissible instead of eleven.
– The text of withdrawn claims must be included in the listing of the
claims.
• Comments on the NPR suggested supplying text of withdrawn
claims for rejoinder purposes.
• Applicants may need to amend withdrawn claims to include
limitations added to elected claims to permit rejoinder.
– Drawing changes may be shown by annotated drawings.
– Permissible markings only include underlining, strikethrough, and
double brackets [[ ]].
Note: changes from NPR are highlighted in bold on the next few slides.
June 4, 2004 53
Revised Amendment Practice (Continued)
Highlights:
1. Each section of an amendment paper must start on a separate sheet.
– For example: each of the following sections must start on a
separate sheet: Introductory comments, Amendments to the
Specification, Amendments to the Claims, Amendments to
Drawings, and Remarks.
2. Submit only one version of the replacement paragraph or section, or
currently amended claims, with markings (i.e., strikethrough, double
brackets [[ ]], or underlining), to show the changes relative to
immediate prior version.
– The requirement to provide a separate, clean version has been
eliminated, except when applicant submits a substitute
specification.
June 4, 2004 54
Amendments to Claims
3. When there is any amendment to a claim, a claim listing of all claims
ever presented in the case must be supplied in ascending numerical
order.
An example of a claim listing is as follows:
Claims 1-5 (canceled)
Claim 6 (previously presented) A bucket with a handle.
Claim 7 (withdrawn) A handle comprising an elongated wire.
Claim 8 (withdrawn) The handle of claim 7[[6]] further comprising a plastic grip.
Claim 9 (currently amended) A bucket with a green blue handle.
Claim 10 (original) The bucket of claim 9 wherein the handle is made of wood.
Claim 11 (canceled)
Claim 12 (not entered)
Claim 13 (new) A bucket with plastic sides and bottom.
June 4, 2004 55
Amendments to Claims (Continued)
What is a claim listing?
– A claim listing must include:
• The claim number of every claim ever presented in the
application, whether entered or not;
• A status identifier, in parentheses, following each claim
number;
• The text of all pending claims (including withdrawn claims);
and
• Markings to show the changes made only in the current
amendment relative to immediate prior version.
– The claims in the listing (in the current amendment) will replace all
prior versions, and listings, of claims in the application.
June 4, 2004 56
Amendments to Claims (Continued)
The seven (7) permissible status identifiers and their
definitions, are:
1. (Original): Claim filed with original specification (not added by
preliminary amendment and not previously amended).
2. (Currently amended): Claim being amended in the current
amendment. Currently amended claims must include markings
(strikethrough, double brackets, or underlining) to indicate changes.
3. (Canceled): Claim canceled or deleted in current amendment or
previously. Do not present the text of a canceled claim.
Consecutive canceled claims may be grouped together (e.g., claims
1-5 (canceled)).
June 4, 2004 57
Amendments to Claims (Continued)
Seven (7) permissible status identifiers (cont.):
4. (Withdrawn): Non-elected claim.
• The text of a withdrawn claim must be presented.
• Withdrawn claims that are being currently amended must be presented with
markings (strikethrough, double brackets, or underlining) to indicate changes.
• Example: Claim 8 (withdrawn) The handle of claim 7[[6]] further comprising a
plastic grip.
5. (Previously presented): This is a generic identifier to cover any claim that was
previously added or amended in an earlier amendment paper.
• The proposed identifiers “previously amended” or “previously added” were
not adopted, and must not be used.
June 4, 2004 58
Amendments to Claims (Continued)
Seven (7) permissible status identifiers (cont.):
6. (New): Claim being added in the current amendment paper. The
text of the claim must be presented in clean form without
underlining.
7. (Not entered): Claim presented in a previous unentered
amendment.
• Do not present the text of a not entered claim.
• Consecutive not entered claims may be grouped together
(e.g., Claims 20-25 (not entered)).
• If in doubt as to whether a prior amendment was entered, the
claim should be presumed to be “not entered”.
June 4, 2004 59
Amendments to Claims (Continued)
The following status identifiers in NPR have
been eliminated:
– previously amended,
– previously added,
– reinstated-formerly claim #_,
– previously reinstated,
– re-presented-formerly dependent claim #_, and
– previously re-presented.
June 4, 2004 60
Amendments to Claims (Continued)
Multiple status identifiers must not be used for any
single claim.
Only claims of the status “currently amended” and
“withdrawn” (if the withdrawn claims are being
currently amended) may include markings.
All other pending claims (including withdrawn
claims that are not being currently amended) must
be presented in clean text (without markings).
June 4, 2004 61
Amendments to Claims (Continued)
Any claim presented in clean text (no markings) constitutes an assertion
that it has not been changed relative to the immediate prior version,
except omitting markings (i.e., underlining, strikethrough, and double
brackets) and deleted text.
– For example,
• If the immediate prior version of the claim was:
“Claim 1 (currently amended) A bucket with a blue handle.”
• The listing of claims in the current amendment must have:
“Claim 1 (previously presented) A bucket with a handle.”
June 4, 2004 62
Amendments to Claims (Continued)
Canceled claims and not entered claims may only have a
“canceled” or “not entered” status identifier after the claim
number. The text must not be supplied.
Grouping of Claims – consecutive canceled claims or not
entered claims may be aggregated into one line.
– Examples: Claims 1-5 (canceled)
Claims 20-25 (not entered)
New or added claims must have “new” as a status identifier
– Do not underline the text of the new claims.
June 4, 2004 63
Revised Amendment Practice (Continued)
Markings to Show Changes:
– The following must include markings to show all changes relative
the immediate prior version:
• Replacement paragraphs or sections,
• Replacement abstracts,
• Currently amended claims, and
• Substitute specifications.
– Added text must be shown by underlining.
– Deleted text must be shown by strikethrough with 2 exceptions.
June 4, 2004 64
Revised Amendment Practice (Continued)
Markings to Show Changes (cont’)
– Deleted text must be shown by strikethrough (e.g.,
strikethrough), with 2 exceptions:
1. For deletion of five or fewer consecutive characters, double
brackets [[ ]] may be used (e.g., [[eroor]]); and
2. If strikethrough cannot be easily perceived, deleted text
must be shown by double brackets [[ ]] around the
deleted text characters.
– For example: changing “4 corners” to “three corners”
should be indicated by “three[[4]] corners”.
June 4, 2004 65
Revised Amendment Practice (Continued)
Markings to Show Changes (cont’)
– For changes of punctuation marks or difficult to perceive
characters, applicants may delete text before and after with
strikethrough, and then insert such text along with the change
by underlining. For example:
• If the hyphen in “strike-through” is to be deleted, it may be
shown as “strike-throughstrikethrough”
June 4, 2004 66
Amendments to Specification
The location of the paragraph or section to be deleted or replaced, or
where a new paragraph or section is to be added, must be
unambiguously identified.
– The location can be identified by using a few words at the beginning
and/or the end of the paragraph or section.
Do not underline the text of a new paragraph or section.
Deletion of a paragraph or section must only include an instruction to
delete, and the location of the paragraph or section.
Replacement paragraph or section must be a marked-up version showing
the changes.
A clean version of any replacement paragraph or section must not be
submitted in addition to a marked up version, except when applicant
submits a substitute specification. 67
June 4, 2004
Amendments to Abstract
An amendment to an abstract is treated like an amendment
to the specification.
– If the changes are minor in nature, submit a replacement abstract
with markings to show all changes relative to the immediate prior
version.
– If the abstract is being substantially rewritten, submit a new
abstract in clean text (no markings) accompanied by an instruction
for the cancellation of the previous abstract.
– Any new, or replacement, abstract must be submitted on a
separate sheet (37 CFR 1.72).
June 4, 2004 68
Substitute Specification
Substitute Specification under 37 CFR 1.125 requires:
– A statement that the substitute specification includes no
new matter.
– A specification with markings to show all the changes
relative to the immediate prior version.
– A clean version (without markings) of the substitute
specification.
• The requirements of a marked-up version and a clean version
have been retained.
June 4, 2004 69
Amendments to Drawings
Amendment to drawings must include:
– Replacement drawing sheet showing amended figures which
include the desired changes, without markings, on a separate
sheet in compliance with §1.84; and
– Explanation of the changes in the remarks, or preferably, in
the drawing amendments section, of the amendment paper.
– Optional unless required by examiner:
• Annotated drawing sheet – a marked-up copy of the
amended figure(s) with annotations showing the change(s)
may be submitted, or required by the examiner.
June 4, 2004 70
Amendments to Drawings (Continued)
Replacement drawing sheet(s) must be identified in top margin as
“Replacement Sheet”.
Annotated drawing sheet(s) must be identified in top margin as
“Annotated Marked-up Drawings”.
– This will avoid confusion between a replacement sheet and an
annotated sheet.
– Annotated drawing sheet(s) will not be entered as part of the official
drawing(s) for the application.
The replacement drawing sheet(s) and annotated drawing sheet(s), if
any, should follow the last page of the amendment paper, as
attachment(s).
June 4, 2004 71
Amendments to Drawings (Continued)
Proposed drawing correction process is eliminated.
Replacement drawing sheet with changes is accepted by
examiner, unless otherwise notified by examiner. No further
drawing submission is required.
If not acceptable, applicants will be notified of any
objections or additional requirements.
June 4, 2004 72
Amendments to Drawings (Continued)
Any replacement drawing sheet including amended
figures must include all of the figures appearing on
the immediate prior version of the sheet.
The replacement drawing figure must not be
labeled as “amended.”
37 CFR 1.173 now provides for amending drawings
in reissue applications in a similar manner.
June 4, 2004 73
Amendments to Drawings (Continued)
Deletion of a figure requires the following:
– An instruction to delete the figure;
– A replacement sheet which does not include the canceled figure,
unless no other figure is on the same sheet as the canceled figure;
– Amendment to the specification to make corresponding changes to
the description of the drawings (e.g., deletion of the description of
the canceled figure); and
– If other figures need to be renumbered, those figures also need to
be amended with revised figure numbers via replacement drawing
sheets.
June 4, 2004 74
After Final Amendments
Any amendment after final (§1.116), or amendment filed with
a request for continued examination (RCE) under §1.114,
must include markings showing the changes relative to the
last entered amendment.
– Do not include markings to show changes relative to any unentered
amendment.
– Applicant should not assume that an after final amendment is
entered because after final amendments are not entered as a
matter of right (§1.116).
June 4, 2004 75
After Final Amendments (Continued)
If applicant has not received an advisory action, applicant should check
via PAIR, or call the examiner, to determine whether the after final
amendment has been entered before filing another after final
amendment or an amendment with an RCE.
If the advisory action has indicated that an after final amendment will
be entered upon the filing of an appeal, applicant should assume that
the after final amendment is not entered.
– Any subsequent amendment must include markings showing the
changes relative to the last entered amendment, and not the
amendment which the advisory action indicated will be entered
upon the filing of an appeal.
June 4, 2004 76
After Final Amendments (Continued)
If applicant wishes to file an RCE after filing more than one after final
amendment that has not been entered, applicant is encouraged to file an
amendment with the RCE that includes:
– Instructions not to enter the unentered after final amendments; and
– All of the desired changes, including changes presented in the
unentered after final amendments.
• The markings must show changes relative to the last entered
amendment.
• A claim listing which includes any unentered claims presented using the
status identifier “not entered” (e.g., claims 20-25 (not entered)).
• Any new claims must be numbered consecutively beginning with the
number next following the highest numbered claim previously presented
(whether entered or not).
June 4, 2004 77
Treatment of
Non-Compliant Amendments
Applicants will be notified of any amendment paper that is not accepted
because the changes do not comply with revised §1.121.
– For preliminary amendments and replies to non-final Office actions or
notices,
• A Notice of Non-Compliant Amendment identifying the problem
section(s) will be mailed; and
• A period for reply shall be given; but
• Patent term adjustment (PTA) reductions may be incurred. See
§1.704(c)(7).
– For after-final amendments,
• Non-compliance will be indicated in an advisory action; and
• The time period for reply continues to run from the mailing date of the
final Office action.
– See MPEP 714.03 (8th Ed. 1st Rev., Feb. 2003).
June 4, 2004 78
Treatment of
Non-Compliant Amendments (Continued)
The Notice of Non-Compliant Amendment will identify:
– Each section of the amendment that is not in compliance with 37 CFR
1.121;
– Items that are required for compliance; and
– The reasons why the section of the amendment fails to comply with
37 CFR 1.121.
In reply to the Notice, applicants must submit the corrected section of
the amendment that was non-compliant.
– Re-submission of the entire amendment is not required.
– The entire section, however, with corrections, must be resubmitted.
The Office will only enter the sections of the amendment that are in
compliance with 37 CFR 1.121.
June 4, 2004 79
Example
Non-compliant claim amendment example:
– If an amendment includes:
(1) amendments to the specification, and
(2) amendments to the claims, including adding new
claims 21 – 25,
• But the amendments to the claims were non-compliant,
• Because the claim listing did not include a status
identifier for each claim,
– A Notice of Non-Compliant Amendment will be mailed.
June 4, 2004 80
Example (Continued)
Non-compliant claim amendment example continued:
– In reply to the Notice, applicant must submit a corrected claim
listing that includes a status identifier for each claim.
– The new claims 21-25 must be presented with the status identifier of
“new” and the text of the claims not underlined.
• Note: the new claims 21-25 must not be presented with the
status identifier of “not entered” and must not be renumbered as
claims 26-30.
– A non-compliant amendment is different than an unentered after final
amendment situation.
– In the after final situation, the claim numbers of any unentered new
claims may not be re-used.
June 4, 2004 81
Example (Continued)
Non-compliant claim amendment example continued:
– The Office would enter:
1. The amendments to the specification from the original
amendment paper, and
2. The amendments to the claims that include the corrected claim
listing from the paper filed in reply to the Notice.
June 4, 2004 82
International Applications
The revised amendment practice under 37 CFR 1.121 does not apply to
amendments filed in the international stage of an international application.
– Such amendments must be in compliance with the Patent Cooperation
Treaty (PCT) amendment procedure (i.e., PCT Articles 19 and
34(2)(b)).
– Status identifiers are not to be used during the international stage.
Amendments filed in the national stage (pursuant to 35 U.S.C. 371) of an
international application must comply with the revised amendment
practice under 37 CFR 1.121.
– The status identifier “original” must only be used for claims that were
presented on or before the international filing date and have not been
modified or canceled.
June 4, 2004 83
Final Rule: Elimination of CPA Practice
as to Utility and Plant Applications –
Effective date: July 14, 2003
Elimination of Continued Prosecution Application
Practice as to Utility and Plant Patent Applications,
68 Fed. Reg. 32376 (May 30, 2003), 1271 Off. Gaz.
Pat. Office 143 (June 24, 2003)(final rule).
June 4, 2004 84
Elimination of CPA Practice
Effective July 14, 2003, CPA practice has been eliminated as
to utility and plant applications.
Any CPA filed in a utility or plant application that was filed
on/after June 8, 1995 will be treated as a request for
continued examination (RCE) under §1.114.
– Note: If the request for a CPA does not satisfy all of the
RCE requirements under §1.114, the request will be
treated as an improper RCE.
Any CPA filed in a utility or plant application that was filed
before June 8, 1995 will be treated under 37 CFR 1.53(e) as
an improper application.
CPA practice remains in effect for design applications.
June 4, 2004 85
When a Notice of Foreign Filing
is Required
Clarification of the United States Patent and Trademark Office’s
Interpretation of the Provisions of 35 U.S.C. 122(b)(2)(B)(ii)-(iv),
1272 Off. Gaz. Pat. Office 22 (July 1, 2003).
Terminology Used:
Non Pub Request
Rescind Request
Notice of Filing of Counterpart Application
June 4, 2004 86
When a Notice of Foreign Filing is Required (7/03)
The Office clarifies that:
(1) If an applicant makes a nonpublication request and then rescinds
the nonpublication request before/on the date a counterpart
application is filed in an eighteen-month publication country, the
application will be treated as if the nonpublication request was
never made.
(2) If an applicant makes a nonpublication request, subsequently files
a counterpart application in an eighteen-month publication country
and also files a notice of this foreign filing within forty-five days of
the date such counterpart application was filed, the applicant is not
required to rescind the nonpublication request.
June 4, 2004 87
When a Notice of Foreign Filing is Required (cont.) (7/03)
The Office clarifies that (continued):
(3) If an applicant makes a nonpublication request and subsequently
files a counterpart application in an eighteen-month publication
country before the nonpublication request is rescinded, the applicant
is required to notify the USPTO of the foreign filing no later than
forty-five days after the date such counterpart application was filed to
avoid abandonment of the application (even if no one recognizes that
the application is abandoned).
(4) When an application is abandoned due to the failure to timely notify
the USPTO of the filing of a counterpart application in an eighteen-
month publication country, applicant’s sole remedy to restore the
application to pending status is by filing a petition under 37 CFR
§ 1.137(b) to revive the abandoned application.
June 4, 2004 88
When a Notice of Foreign Filing is Required (cont.) (7/03)
The Office clarifies that (continued):
(5) Applicants should also provide a notice of foreign filing when
rescinding a nonpublication request in anticipation of filing a
counterpart application in an eighteen-month publication country
because no benefit is given to a certificate of mailing or transmission
under 37 CFR 1.8 on a rescission of a nonpublication request in
determining whether applicant has rescinded the nonpublication
request before or on the date a counterpart application is filed in an
eighteen-month publication country.
(6) Applicants may use USPTO form PTO/SB/36 (revision April 2001 or
later) to both rescind a nonpublication request and provide notice of
foreign filing.
June 4, 2004 89
Summary – When a Notice of Foreign Filing
is Required
Summary
1) NonPub Request – Rescind Request – Foreign File – OK
2) NonPub Request – Foreign file – Notice within 45 days - OK
3) NonPub Request – Foreign file – No Notice within 45 days –
application abandoned
In 2 and 3 a Rescind Request is insufficient alone and not needed.
4) If case abandoned, sole remedy is revival per 1.137(b)
5) No C of M benefit given to Rescind Request
6) Use PTO/SB/36 (revision April 2001 or later)
June 4, 2004 90
Reexamination Guidelines
(Portola)
Effective Date: November 2, 2002
Revised Guidelines for Usage of Previously Cited/Considered
Prior Art In Reexamination Proceedings, 1272 Off. Gaz. Pat.
Office 24 (July 1, 2003).
June 4, 2004 91
Reexamination Guidelines (11/02/02)
This notice sets forth reexamination policy and practice now in
effect as a result of the revision of the reexamination statute
made by the Public Law 107-273 (2002), which, in effect,
overruled In re Portola, 100 F.3d 786, 42 USPQ2d 1295 (Fed.
Cir. 1997). See In re Robert T. Bass, 65 USPQ2d 1156, 1157
(Fed. Cir. 1997).
Permits reexamination on the basis of prior art that was
previously cited by or to, or considered by, the USPTO.
In any reexamination ordered on or after November 2, 2002
(the effective date of the statutory revision), reliance on old art
does not necessarily preclude the existence of a substantial
new question of patentability that is based exclusively on that
old art.
June 4, 2004 92
Information Disclosure Statements (IDSs) May
Be Filed Without Copies of U.S. References
Effective Date: For patent applications filed after
June 30, 2003
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)
June 4, 2004 93
IDSs May Be Filed Without Copies of U.S.
References (6/30/03)
Electronic Information Disclosure Statement (eIDS)
– Section 1.98 has been amended to provide that the requirement for a
copy of U.S. patents and U.S. application publications does not apply
to any IDS submitted electronically in compliance with the Office’s
EFS. Also see 1262 OG 94 (9/17/02).
– Only U.S. patents and application publications may be submitted with
eIDS.
– eIDS may be submitted with original application or later.
– eIDS may be submitted even where application was not submitted by
EFS.
– eIDS automatically loads patent citations for Examiner with EAST &
WEST search tools. 94
June 4, 2004
IDSs May Be Filed Without Copies of U.S.
References (Continued)
Copies of cited U.S. patents and U.S. application publications are not
required for IDS submissions filed in:
– U.S. applications filed after June 30, 2003; and
– International applications that have entered the national stage
under 35 U.S.C. 371 after June 30, 2003.
– See 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).
http://www.uspto.gov/web/offices/com/sol/og/2003/week31/patdisc.htm
June 4, 2004 95
IDSs May Be Filed Without Copies of
U.S. References (Continued)
For applications filed on or before June 30, 2003,
copies of cited U.S. patents and patent
application publications are still required unless
the references are submitted in an eIDS.
Applicants are still required to submit copies of
foreign patent documents and non-patent
literature in accordance with §1.98(a)(2).
June 4, 2004 96
USPTO to Cease Supplying Copies U.S. Patent
References Cited by the Office (E-Patent Reference)
USPTO To Provide Electronic Access to Cited U.S. Patent References
with Office Actions and Cease Supplying Paper Copies, 1282 Off. Gaz Pat.
Office 109 (May 18, 2004).
Notice of Office Plan to Cease Supplying Copies of Cited U.S.Patent
References With Office Actions, and Pilot to Evaluate The Alternative of
Providing Electronic Access to Such U.S. Patent References, 1277 Off.
Gaz Pat. Office 156 (December 23, 2003).
June 4, 2004 97
USPTO to Cease Supplying Copies U.S. Patent
References Cited by the Office (5/04)
U.S. patent references cited in Office actions can be downloaded in one
downloading step using E-Patent Reference feature of private PAIR.
The Office will begin to cease mailing paper copies of U.S. patent
references with Office actions in accordance with the schedule:
– June 2004 – TCs 1600, 1700, 2800 and 2900
– July 2004 – TCs 3600 and 3700
– August 2004 – TCs 2100 and 2600
Paper copies of foreign patents and non-patent literature will continue
to be included with Office actions, as well as U.S. patent references
cited during the international stage of an international application.
U.S. patent references will continue to be available on the USPTO web
site, from the Office of Public Records and from commercial sources.
June 4, 2004 98
USPTO to Cease Supplying Copies U.S. Patent
References Cited by the Office (continued)(5/04)
E-Patent Reference is a feature on private PAIR.
To access to private PAIR, a practitioner of record or
pro se applicant must:
1. Get a free Public Key Infrastructure (PKI) digital certificate
from the Office.
• Instructions for obtaining a PKI digital certificate are
available at the Office’s Electronic Business Center
(EBC) web page at
<http://www.uspto.gov/ebc/downloads.html>.
June 4, 2004 99
USPTO to Cease Supplying Copies U.S. Patent
References Cited by the Office (continued)(5/04)
2. Get a customer number from the Office:
i. Download and complete the Customer Number Request form,
PTO-SB125, at: http://www.uspto.gov/web/forms/sb0125.pdf.
ii. Associate your registration number with a customer number by
adding your registration number to the Customer Number
Request form.
iii. The completed form can then be transmitted by facsimile to the
Electronic Business Center at (703) 308-2840, or mailed to the
address on the form.
June 4, 2004 100
USPTO to Cease Supplying Copies U.S. Patent
References Cited by the Office (continued)(5/04)
3. Associate the application’s correspondence address with
the customer number.
– A description of associating a customer number with an application
is described at the EBC web page at:
http://www.uspto.gov/ebc/registration_pair.html.
4. Obtain the software for electronic filing,
– By downloading from www.uspto.gov/ebs, or
– By contacting EFS Help Desk at (703) 305-3028.
– Adobe Acrobat Reader is also required and available through a link
from the USPTO web site.
5. Arrange for appropriate Internet access.
June 4, 2004 101
USPTO to Cease Supplying Copies U.S. Patent
References Cited by the Office (continued)(5/04)
A practitioner of record or pro se applicant will be able
to access application information using their PKI
certificate to view the private PAIR Screen for
applications which have the correspondence address
associated with your customer number.
– When references are available for downloading, a
reference button is displayed as shown on the next page.
June 4, 2004 102
USPTO to Cease Supplying Copies U.S. Patent
References Cited by the Office (continued)(5/04)
New Button In private PAIR To Display References
June 4, 2004 103
TC1600 Restriction Practice Action
Plan and Unity of Invention Study
Next Steps
Review of TC1600 Restriction Practice Action Plan
Summary of Public Comments
June 4, 2004 104
Review of TC1600
Restriction Practice Action Plan (5/03)
The action plan included 5 initiatives:
1. Publish Examples Of Claim Sets
2. Emphasis On Rejoinder Practice
3. Examiner Training On Restriction Practice
4. Enhanced Review Of Restriction Requirements
5. Continuous Assessment
June 4, 2004 105
Unity of Invention Study (5/03)
Request for Public Comments
See Request for Comments on the Study of the Changes
Needed To Implement a Unity of Invention Standard in the
United States, 68 Fed. Reg. 27536 (May 30, 2003), 1271 Off.
Gaz. Pat. Office 98 (June 17, 2003).
Summary of Public Comments (26) and Restriction
Reform Options Study
See Summary of Public Comments and the Restriction
Reform Options to be Studied by the United States Patent and
Trademark Office (signed November 17, 2003) available at
http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html.
June 4, 2004 106
Correspondence Filed by Individuals Whose
Names Have Been Removed from the Register
Correspondence Filed By Individuals Whose Names Have
Been Removed From The Register Pursuant to 37 CFR
10.11(b), 1276 Off. Gaz. Pat. Office 61 (November 11, 2003)
June 4, 2004 107
Correspondence Filed by Individuals Whose Names
Have Been Removed From The Register (11/03)
Practitioners whose names have been removed from the
register due to the failure to reply or provide information
requested by the Director of the Office of Enrollment and
Discipline (OED) under 37 CFR 10.11(b) are not entitled to
practice before the USPTO until reinstated.
– E.g., a failure to reply to a survey pursuant to 37 CFR
10.11(b) conducted by OED may result in the removal
of the practitioner’s name from the register.
– The names of all active registered practitioners are
available at
http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.
html.
June 4, 2004 108
Correspondence Filed by Individuals Whose Names
Have Been Removed From The Register (Continued)
Correspondence signed by practitioners whose names have
been removed from register will be treated as improperly signed
and will not be entered. See MPEP 714.01(a).
– The Office will notify the first named practitioner whose name
is still on the register (or the first named inventor or assignee
of record, where appropriate) of the status and advise that a
duplicate correspondence properly signed must be furnished
or a ratification is required.
– Applicant must timely submit a properly signed
correspondence or ratify the previously filed correspondence
to avoid abandonment of the application,
• e.g., within the period for reply set in the prior Office action if the
application is under final rejection.
June 4, 2004 109
Documents Required by the Office of Patent
Publication – Waiver of 37 CFR 1.312
The Office of Patent Publication may waive the
requirements of 37 CFR 1.312 to accept amendments
after the payment of issue fee that are required by the
Office to correct errors in the application discovered
during the preparation of the issuance of the patent.
See Waiver of 37 CFR1.312 for Documents Required by
the Office of Patent Publication, 1280 Off. Gaz. Pat. Office
918 (March 23, 2004).
June 4, 2004 110
Copies of File Contents Available on Compact
Disc Partial Waiver of 37 CFR 1.19(b)
The Office may provide copies of a patent
application as filed, or the contents of a patent
application, on either paper or compact disc
regardless of the media on which those records
were submitted to the Office.
See Copies of File Contents Available on Compact
Disc Partial Waiver of 37 CFR 1.19(b), 1278 Off.
Gaz. Pat. Office 261 (January 27, 2004).
June 4, 2004 111
European Patent Office (EPO) Resumes
Competence to Act as a PCT Authority
EPO will resume acting as a competent International Searching Authority
(ISA) for international applications filed by U.S. residents or nationals on or
after January 1, 2004 in the USPTO or IB as receiving Office, and where
the application contains claims directed to the field of biotechnology.
The EPO will resume acting as a competent International Preliminary
Examining Authority (IPEA) for international applications filed by U.S.
residents or nationals on or after January 1, 2004 in the USPTO or IB as
receiving Office, where the application contains one or more claims
directed to the field of biotechnology and where the EPO acted as the ISA.
See Notice Concerning European Patent Office Competence to Act as a
Patent Cooperation Treaty Authority, 1277 Off. Gaz. Pat. Office 230
(December 30, 2003).
June 4, 2004 112
Patent Application Publications May Now
Include Amendments
The patent application publication may be based upon:
– A substitute specification,
– An amendment to the abstract,
– A complete claim listing, and
– Replacement drawing sheets.
The amendments must be submitted in sufficient time to be entered into
the application file wrapper before technical preparations for publication
of the application have begun.
– Generally, technical preparations begin between 14 and 9 weeks
prior to the projected publication date (PPD).
See Patent Application Publications May Now Include Amendments, 1281 Off. Gaz.
Pat. Office 53 (April 13, 2004). 113
June 4, 2004
Usage of Application Data Sheets Encouraged
Use of an application data sheet (37 CFR 1.76) is strongly
encouraged when submitting:
– A request to correct or change the name of an inventor,
– A request to correct the inventorship, or
– A petition to change the order of the inventors’ names.
See Advance Notice of Change to MPEP 605.04(b), (c) and (f) -
Application Data Sheets Are Strongly Recommended When
Inventor Information is Changed, 1281 Off. Gaz. Pat. Office 54
(April 13, 2004).
June 4, 2004 114
Submitting Confidential Information to the Office
To maintain information in confidence, any material submitted
pursuant to MPEP 724.02 must be placed in a clearly labeled
envelope that indicates that the material is not to be scanned.
Information not submitted in compliance with MPEP 724.02 will be
scanned and placed in the Image File Wrapper.
See Reminder of the Proper Procedure for Filing Confidential
Information Pursuant to MPEP 724.02, __ Off. Gaz. Pat. Office _
(May 18, 2004).
June 4, 2004 115
Centralized Delivery of Hand-Carried
Papers and Facsimile Transmissions
Effective Date: December 1, 2003
1. Centralized Delivery and Facsimile Transmission Requirements
for Patent Application Related Correspondence, 1275 Off. Gaz.
Pat. Office 200 (October 28, 2003).
2. Revised Procedures for Papers Requiring Immediate Attention,
1279 Off. Gaz. Pat. Office 149 (February 24, 2004).
3. Revised Procedures for Papers Requiring Immediate Attention,
1280 Off. Gaz. Pat. Office 917 (March 23, 2004).
June 4, 2004 116
Centralized Delivery of Hand-Carried Papers
and Facsimile Transmissions
Effective December 1, 2003, for all official patent application related
correspondence for organizations reporting to the Commissioner of
Patents:
– Correspondence that is hand-carried (or delivered by other delivery
services, e.g., FedEx, UPS, etc.) must be delivered to the Customer
Window (with a few exceptions):
2011 South Clark Place
Crystal Plaza Two, Lobby, Room 1B03
Arlington, VA 22202
– Effective June 5, 2004, although the building will remain the same,
the address will change to: 220 South 20th Street.
– Correspondence that is transmitted by facsimile must be directed to
the central facsimile number, (703) 872-9306 (with a few exceptions).
June 4, 2004 117
Centralized Delivery of Hand-Carried Papers
and Facsimile Transmissions
SOME EXCEPTIONS:
Direct delivery or facsimile is appropriate for:
Petitions for express abandonment to avoid publication
under §1.138(c)
Petitions to withdraw an application from issue under
§1.313(c)
Request for expedited examination of a design application
Papers required by the Office of Patent Publication
June 4, 2004 118
Mail Stops
See Establishment of New Mail Stop L&R; FAX Number for
Requests for Expedited Foreign Filing Licenses, __ Off.
Gaz. Pat. Office _ (May18, 2004).
See Establishment of Mail Stop Post Issue; Revision and
Deletion of Certain Mail Stops, __ Off. Gaz. Pat. Office _
(May 25, 2004).
Special Mail Stops for Patent Mail, __ Off. Gaz. Pat. Office _
(May 25, 2004).
June 4, 2004 119
New Mail Stop L&R
When submitting applications subject to secrecy order or that are
national security classified, or correspondence to be filed in such
an application, the papers should either be:
1. Hand carried to Licensing and Review; or
2. Mailed to a new Mail Stop, Mail Stop L&R.
– Requests for Expedited Foreign Filing Licenses may be faxed
to (703) 305-7658.
See Establishment of New Mail Stop L&R; FAX Number for
Requests for Expedited Foreign Filing Licenses, __ Off. Gaz. Pat.
Office __ (May 18, 2004).
June 4, 2004 120
New Mail Stops
Mail Stop Post Issue – for correspondence in applications that have
issued as a patent, such as:
– revocations of powers of attorney, withdrawal of attorney, submissions under
37 CFR 1.501, and requests for changes of address (other than a fee address,
which should be addressed to Mail Stop M Correspondence).
Mail Stop Amendment – e.g., replies to non-final Office actions
– Mail Stop Non-Fee Amendment has been changed to Mail Stop Amendment
Mail Stop Express Abandonment – for petitions and letters of
express abandonment under 37 CFR 1.138
– Mail Stop PGPub-ABD has been changed to Mail Stop Express Abandonment.
See Establishment of Mail Stop Post Issue; Revision and Deletion of Certain Mail
Stops, __ Off. Gaz. Pat. Office __ (May 25, 2004).
June 4, 2004 121
Deletions of Mail Stops
The mail stops that should no longer be used are:
– Mail Stop Application Number
– Mail Stop CPA
– Mail Stop Design
– Mail Stop Non-Fee Amendment (has been changed to Mail Stop Amendment);
– Mail Stop Patent Application;
– Mail Stop PGPub-ABD (has been changed to Mail Stop Express Abandonment);
and
– Mail Stop Provisional Patent Application.
If no mail stop is included on the list in the OG notice, then no mail stop
should be used for the correspondence.
See Special Mail Stops for Patent Mail, 1282 Off. Gaz. Pat. Office 158 (May 25, 2004).
June 4, 2004 122
Revised Procedures
For Express Abandonments
Any petition for express abandonment to avoid publication and any other
letter of express abandonment under 37 CFR 1.138, should be:
1. Mailed to: Mail Stop Express Abandonment
2. Transmitted by facsimile directly to (703) 305-8568; or
3. Hand delivered to the Pre-Grant Publication Division.
Since even a petition under § 1.138(c) will not stop publication unless it is recognized and
acted on by the Pre-Grant Publication Division in sufficient time to avoid publication, a
petition under § 1.138(c) should be filed by facsimile or hand-delivery if the projected
publication date is within three months of the date when the petition will be filed.
See Revised Procedures for Express Abandonments, __ Off. Gaz. Pat. Office _ (May 25,
2004).
June 4, 2004 123
Lengthy Tables
Lengthy tables (e.g., tables on more than 200 pages) cause
significant scanning and publication problems.
Applicants are encouraged to submit lengthy tables on compact disc
(CD) in ASCII text as provided in 37 CFR 1.52(e) or via Electronic
Filing System (EFS) with the application, as an appendix (and not
embedded in the specification).
Lengthy tables submitted in such electronic form will be published by
posting on the sequence homepage of the USPTO web site.
See Notice that Lengthy Tables will be Published Differently in
Patents, Statutory Invention Registration and patent Application
Publication And Notice of Pilot Program With Respect to Lengthy
Tables, __ Off. Gaz. Pat. Office _ (May 18, 2004).
June 4, 2004 124
Request for Alert
Concerning Submitted Petitions
If a petition filed after June 30, 2003 has not been acted upon by the
Office; and
The petition is a type that is decided by the Office of Deputy Commissioner
for Patent Examination Policy listed in MPEP § 1002.02(b),
Applicants are encouraged to send an e-mail alert to petitions@uspto.gov.
Applicants should check either their records or PAIR to determine whether
the Office has responded to a petition listed in the MPEP § 1002.02(b),
including the Office of Patent Legal Administration and the Office of
Petitions (e.g., petitions to revive, petitions to withdraw an application from
issue, and petitions for patent term adjustment).
See Request for Alert Concerning Submitted Petitions, __ Off. Gaz. Pat. Office _ (May __,
2004).
June 4, 2004 125
Request for Alert
Concerning Submitted Petitions (continued)
The e-mail alert should include:
The application number of the application in which the petition was
filed;
The filing date of the petition; and
The regulation under which the petition was filed, if known.
– Example [e-mail addressed to petitions@uspto.gov]
The following petitions have not been answered to date:
Application No. Petition Filed Regulation
10/111,111 October 3, 2003 37 CFR 1.137(b)
10/222,222 December 5, 2003 37 CFR 1.183
June 4, 2004 126
Request for Alert
Concerning Submitted Petitions (continued)
The e-mail alert
Should not include other information and attachments;
Will not be considered a communication in the file under 37 CFR
1.4(a)(2);
Will not be considered a status inquiry;
Will not be entered into the file contents; and
Will not be acknowledged.
June 4, 2004 127
New Street Address for the Customer Window for
Patent Correspondence NOT Delivered by the USPS
Effective June 5, 2004, patent correspondence delivered by hand or
delivery services, other than the USPS, to the Customer Window
must be addressed as follows:
U.S. Patent and Trademark Office
220 20th Street S.
Customer Window, Mail Stop ________
Crystal Plaza Two, Lobby, Room 1B03
Arlington, VA 22202
Although the physical location of the Customer Window (the building
and room number) will remain the same, on June 5, 2004 the street
address of the Crystal Plaza 2 building will change from 2011 South
Clark Place to 220 20th Street S.
See New Address for Customer Window which is Used for Patent Mail Not
Delivered by USPS, 1283 Off. Gaz. Pat. Office 23 (June 1, 2004) for other street
June 4, 2004 address changes. 128
Thank You
Visit the Office’s website at:
http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
for Recent Patent-Related Notices
June 4, 2004 129
