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Recent Rule Changes Powered By Docstoc
					               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

				
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