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Patent Business Goals (PBG) - Final Rule. Hiram Bernstein Senior Legal Advisor Office of Patent Legal Administration (OPLA), USPTO (703) 305-8713 hiram.bernstein@uspto.gov PBG - Final Rule webpage http://www.uspto.gov/web/offices/dcom/olia/pbg/index.html. August 1, 2001.

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Patent Business Goals (PBG) - Final Rule

Hiram Bernstein

Senior Legal Advisor

Office of Patent Legal Administration (OPLA), USPTO

(703) 305-8713 hiram.bernstein@uspto.gov

PBG - Final Rule webpagehttp://www.uspto.gov/web/offices/dcom/olia/pbg/index.html

August 1, 2001


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Publication and Effective Dates

  • Patent Business Goals - Final Rule 65 Fed. Reg. 54603 (September 8, 2000), 1238 Off. Gaz. Pat. Office 77 (September 19, 2000); Proposed Rule: 64 Fed. Reg. 53772 (Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15 (November 2, 1999).

    • Effective date: November 7, 2000 for most changes (see 65 Fed. Reg. 54604)


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Information Contacts:

In general - Hiram Bernstein (703) 305-8713, Robert Clarke (703) 305-9177or Bob Spar (703) 308-5107.

  • Hiram Bernstein ((703) 305-8713): §§ 1.9, 1.22, 1.26 through 1.28, 1.41, 1.48, 1.56, 1.85(c), 1.97, 1.98, 1.105, 1.111, 1.115, 1.131, 1.132, 1.133, 1.136, 1.137, 1.138, 1.322 through 1.324, Part 3 and Part 10.

  • Robert Clarke ((703) 305-9177): §§ 1.25, 1.26, 1.52(b)(2), 1.112, 1.193, 1.311 through 1.313, 1.366 and processing and petition fees.

  • James Engel ((703) 308-5106) or Fred Silverberg ((703) 557-8986): §§ 1.152 et seq, and Part 5.

  • Eugenia Jones ((703) 306-5586): §§ 1.9, 1.27, 1.28, 1.76, 1.78.


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Information Contacts cont.

  • Jay Lucas ((703) 308-6868), Anton Fetting ((703) 305-8449) or Michael Lewis ((703) 306-5585): §§ 1.96, and 1.821 et seq.

  • Joe Narcavage ((703) 305-1795): §§ 1.52(b)(6), 1.72, 1.121, 1.125, and 1.173 et seq.

  • Kenneth Schor ((703) 308-6710): §§ 1.97, 1.98, 1.173 et seq., 1.510 et seq., and Part 3.

  • Fred Silverberg ((703) 305-8986): § 1.53, 1.55, 1.63 (oath or declaration) form.

  • Karin Tyson ((703) 306-3159): §§ 1.14, 1.33, 1.44, 1.47, 1.51, 1.52 (except (b)(2) and (b)(6)), 1.59, 1.63, 1.64, 1.67, 1.77, 1.84, 1.85 (except (c)), 1.163, and 1.720 et seq.


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Changes to Patent Related Forms

  • New Forms:

    • PTO/SB/01a: Declaration for Utility or Design Application using an Application Data Sheet

    • PTO/SB/03a: Declaration for Plant Application using an Application Data Sheet

    • PTO/SB/27: Request for Expedited Examination of a Design Application

    • PTO/SB/30: Request for Continued Examination (RCE) Transmittal

    • PTO/SB/35: Request for NonPublication Under 35 USC 122(b)(2)(B)(i)

    • PTO/SB/36: Request to Rescind Previous Nonpublication

    • PTO/SB/37: Request for Deferral of Examination

    • PTO/SB/58: Request for Inter Partes Reexamination Transmittal Form


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Changes to Patent Related Forms(cont.)

  • The following forms have been modified to add check boxes for small entity, ADS, and/or expedited examination for design applications:

    • PTO/SB/05: Utility Patent Application Transmittal

    • PTO/SB/16: Provisional Application for Patent Cover Sheet

    • PTO/SB/17: Fee Transmittal for FY 2001

    • PTO/SB/18: Design Patent Application Transmittal

    • PTO/SB/19: Plant Patent Application Transmittal

    • PTO/SB/22: Petition for Extension of Time under 37 CFR 1.136(a)

    • PTO/SB/29: Continued Prosecution Application Request Transmittal

    • PTO/SB/30: Request for Continued Examination (RCE) Transmittal

    • PTO/SB/50: Reissue Transmittal

    • PTO/SB/56: Reissue Application Fee Transmittal Form


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§ 1.4(b) - Correspondence

  • Clarified that duplicate copies of correspondence should be avoided

  • Office may dispose of duplicate papers

  • If a paper is directed to multiple files, a separate copy of the paper must be furnished in each file


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§ 1.14 - Patent Applications Preserved In Confidence

  • Rewritten to define “status” and “access”

  • “Status” is defined as:

    • whether the application is pending, abandoned, or patented; and

    • the application numeric identifier

  • “Access” is defined as providing the application file for review and copying of material


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§ 1.14(d)(4) - Power to Inspect

  • § 1.14(d)(4) now allows registered attorney or agent named in application transmittal papers to give a power to inspect until an executed § 1.63 oath or declaration is filed.


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§ 1.14(e) - Access To Applications

  • Modified to remove former provision § 1.14(a)(3)(iv)(C) so that access is no longer given to an abandoned application simply because it claims benefit of another application open to public inspection


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§ 1.17 - Application Processing Fees (1.17(h) and (i)) - $130.00

  • § 1.17 (h) and (i) are reformulated to:

    • provide for petition fees in paragraph (h)

      • matters typically requiring the exercise of judgment or discretion are now located in this paragraph,

        • e.g. § 1.102 to make an application special, § 1.103 to suspend action in an application, § 1.183 to suspend the rules

    • provide for processing fees in paragraph (i)

      • matters typically not requiring the exercise of judgment or discretion are now located in this paragraph,

        • e.g. § 1.55 for entry of late priority papers


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§ 1.17 - Application Processing Fees - IDS (1.17(p)) $130.00

  • § 1.17(p) has been amended to provide for a single fee for the submission of information disclosure statements under either § 1.97(c) or § 1.97(d).

    • The fee for either type of submission has been amended to be $180.00, the actual cost to the Office associated with the submission

      • Results in a fee reduction for IDS’s submitted before a final Office action and a fee increase for IDS’s submitted after a final Office action


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§ 1.19 - Fees $130.00

  • § 1.19(a)(3) clarifies that the fee for a copy of a patent including a color drawing is $25 and not $3.

  • § 1.19(b)(2) now sets forth a fee of $200 for the first 400 or fewer pages of a copy of a patent-related file wrapper, a fee of $40 for each additional 100 pages and a $25 fee for certification.

  • § 1.19(b)(3) sets forth a new fee of $55 for the first copy of a compact disc in a file wrapper, with $15 fee for each additional copy.

  • §§ 1.19 (g) and (h) are eliminated. Certification of a third party copy of a filewrapper is no longer permitted, thus the fee is eliminated (1.19(g)). Further, there is no longer a $25 fee for obtaining a corrected filing receipt (1.19(h)).


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§ $130.001.22(b) - Fee Itemization

  • Itemization is required when multiple fees made by a single payment

  • Office may return fees that are not itemized


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§ 1.26(a) - $130.00Refunds

  • Absent any instructions to credit a deposit account, Office may designate “electronic funds transfer” as the refund method, unless the relevant fee was paid by credit card

  • Refund of fees paid by credit card will be by a credit to the credit card account to which the fee was charged


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§ 1.26(b) - $130.00Refunds

  • Sets a 2-year time period within which a request for a refund must be filed

  • Payments made by check and by authorization to charge a deposit account are treated the same way

    • Date of payment for authorizations to charge a deposit account is the date of filing of the fee paper. It is no longer the date the deposit account is debited.


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§ 1.27 - Establishing Small Entity Status $130.00

  • Simplified the procedure for asserting a claim for small entity status

  • Applicants still need to make a thorough investigation before making an assertion of entitlement to small entity status

  • New standard effective on the date of publication in the Federal Register, September 8, 2000


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§ 1.27(c)(1) - Assertion by Writing $130.00

  • Small entity status can be established by a simple written assertion of entitlement to small entity status

  • The Office will liberally construe any written reference to small entity status to be a request for small entity status

  • Office transmittal forms have been revised to include a box to check to assert small entity status


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§ 1.27(c)(2) - Parties Who Can Sign and File Assertion $130.00

  • The parties who can assert small entity status are expanded to include:

    • a registered practitioner (need not be of record)

    • one of the inventors (instead of all inventors)

    • a partial assignee (instead of all assignees)

      • An assertion of small entity status by an assignee must be filed by a § 1.33(b) party


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§ 1.27(c)(3) - Assertion by Fee Payment $130.00

  • Payment of any exact small entity basic filing (§§ 1.16(a), (f), (g), (h), or (k)) or basic national fee (§§ 1.492(a)(1) -(a)(5)) is sufficient to assert and obtain small entity status (even if the wrong exact basic filing or national fee is identified)

  • Payment of any other small entity fee in its exact amount will not result in small entity status absent a specific written assertion


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§ 1.33(a) $130.00 - Correspondence Address

  • § 1.33(a)(1) now permits the party who filed the application to change the correspondence address until a § 1.63 oath or declaration, executed by at least one inventor, is filed including:

    • those inventors who filed the application

    • a prospective or partial assignee

    • the attorney or agent

    • any other practitioner named as an additional representative

  • Please provide a daytime telephone number


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§ 1.44 - Proof of Authority of Legal Representative $130.00(rule deleted)

  • Proof of authority of the legal representative of deceased (§ 1.42) or incapacitated (§ 1.43) inventor

    • no longer required in any application, regardless of the filing date of the application

    • just indicate title as legal representative in the oath or declaration when executing the oath or declaration so that the relationship of the legal rep to the deceased/incapacitated inventor is clear

  • Effective on the date of publication in the Federal Register, September 8, 2000.


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§ 1.47 - Notice to Non-signing Inventor $130.00

  • Notice to the inventor of the filing of an application by other than the inventor

    • such notice will not be provided a second or subsequent time for the filing of continuing applications either

      • by mail directly to the non-participating inventor, or

      • by publication in the Official Gazette


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§ 1.52(b)(6) - Optional $130.00Paragraph Numbering

  • Optional numbering of paragraphs in specification at filing will facilitate amendment practice by paragraph replacement (§ 1.121)

  • Will provide a uniform method for identifying paragraphs in the specification, and overcome word processing pagination and formatting differences

  • Suggested format: [0001] Bold font, four digit leading zeroes, enclosed by brackets, positioned to the right of the left margin as the first part of the paragraph

  • Will ease transition into total electronic filing


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Example of Optional Paragraph Numbering $130.00

ORIGINAL SPECIFICATION:

[0045] A regenerative adaptive fluid motor system integrating a load adaptive fluid motor control system is being developed to improve upon existing systems. No additional feedback systems need be included in the improved …….

[0046] Additionally, several old mechanisms could be employed without creating more functionality or requiring more manufactured components.


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Compact Disc Specifications Added to § 1.52 $130.00

  • Submission on Compact Disc of certain specification parts in lieu of paper or microfiche

  • Limited to CD-ROM (Compact Disc-Read Only Memory) and CD-R (Compact Disc-Recordable) media

    • No CD-RW media allowed

    • No DVD


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§ 1.52(e) - Disc Requirements $130.00

  • Must conform to (International Standards Organization) ISO 9660 standard

  • A duplicate copy of each disc is required except for conventional CRF

    • Transmittal letter must state duplicate discs are identical

  • Specification must contain an incorporation-by-reference of the material on compact disc § 1.77(b)(4)


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§ 1.52(e) - Disc Requirements (cont.) $130.00

  • All files must be ASCII, no proprietary file formats permitted

  • Data may span multiple discs if required

  • Discs must be transmitted in protective packaging and labeled as provided in the rule

  • Files on CD must be identified in specification as provided in the rule (by name, size, date)


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§ 1.52(e) - Application Parts $130.00

  • Submissions on Compact Disc limited to:

    • Nucleotide and/or amino acid sequence listing (§ 1.821(c))

    • Tables over 50 pages (§ 1.58)

    • Computer program listings over 300 lines (§ 1.96)


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§ 1.53(c) $130.00 - Application Filing Requirements Provisional Application

  • In a provisional application, an application data sheet (§ 1.76) may be used as the required cover sheet.


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§ 1.53(e) - Failure to Meet Filing Date Requirements $130.00

  • Regardless of whether the application is filed under §§ 1.53(b), 1.53(c), or § 1.53(d), all petitions to accord a filing date must be accompanied by a fee of $130.00 set forth in § 1.17(h).


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§ 1.53(f) - $130.00Completion of Nonprovisional Application Subsequent to Filing

  • Provisions of § 1.53(f) apply to all nonprovisional applications including reissues.

  • If applicant does not pay one of the basic filing, or processing and retention fees during the pendency of the application, the Office may dispose of the application. § 1.53(f)(5)

    • Applicant no longer has one year from the date of the mailing of a Notice to File Missing Parts.


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§ 1.53(g) - $130.00Completion of Provisional Application Subsequent to Filing

  • If applicant does not pay the basic filing fee during the pendency of the provisional application, the Office may dispose of the application. § 1.53(g)(3)


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§ 1.55(a) - $130.00Foreign Priority Data

  • § 1.55(a) no longer requires a petition for placement of a foreign priority claim in the file after theissue fee has been paid (except for utility or plant applications filed on or after November 29, 2000).

    • After payment of the issue fee, a priority claim filed with the required processing fee of $130 will not be reviewed for compliance with 35 USC 119(a)-(d) and the patent will not publish with a priority claim.

      • Patentee can then request a certificate of correction to place the foreign priority on the patent for an additional $100.00 fee under 37 CFR 1.323. § 1.55(a)(2)(iv)


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§ 1.58 - $130.00Tables on Compact Disc

  • Must be an ASCII file. Proprietary files or non-ASCII row/column format delimiters are not allowed (e.g. no MS-Word “Tables” or spreadsheets).

  • Data must be arranged to preserve row and columns in tables and formulas when viewed with a text viewer


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§ 1.63 - Oath or Declaration $130.00

  • Clarified that there is no minimum age requirement for signature on an oath or declaration (§ 1.63(a)(1)), rather

    • competency to understand what is being signed is required


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§ 1.63(c) - Oath or Declaration $130.00

  • The term “post office address” has been replaced by “mailing address”

    • no change in requirement

    • intended to eliminate confusion by applicants

  • oath or declaration does not need the following if provided in an application data sheet (§ 1.76)

    • mailing address

    • residence

    • foreign priority information


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§ 1.64(b) - Legal Representative $130.00

  • A legal representative must state, in the oath or declaration, his or her:

    • citizenship,

    • residence and

    • mailing address


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§ 1.67(a) $130.00 - Supplemental Oath or Declaration

  • A deficiency or inaccuracy that relates to fewer than all of the inventors may be corrected by:

    • a declaration signed by the inventor(s) pertaining to the deficiency or inaccuracy, or

    • if the deficiency or inaccuracy is in the failure to meet the requirements of § 1.63(c), by an application data sheet (§ 1.76)


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§ 1.72 - Title and Abstract $130.00

  • Title should be no longer than 500 characters and as specific as possible.

    • Unless supplied in an application data sheet, the title should belocated on the first page of the specification, (§ 1.76)

  • Abstract should be brief, no longer than 150 words, and must be on a separate piece of paper.

    • 150 word limit has been imposed to conform to PCT standards and for Pre-grant Publication purposes. Abstracts with more than 150 words that are objected to by OIPE shall be held there until corrected.


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§1.76 - Application Data Sheet $130.00

  • Provides for a sheet(s) containing bibliographic and other application information in a specified format

  • This information includes applicant, correspondence address, representative, domestic priority claim, and foreign priority claim information

  • Guide to the Application Data Sheet can be found on the USPTO’s Web site at http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html

    • ePAVE software may be used to prepare an ADS

    • Patent Electronic Business Center (703) 305-3028.


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§ 1.78(a) - $130.00Priority Reference Under 35 U.S.C. 119(e) & 120

  • § 1.78(a)(2) is amended to permit applicants to state the specific priority reference required by 35 U.S.C. 120 in the Application Data Sheet (ADS) (37 CFR 1.76) instead of in the first sentence of the application’s specification.

  • § 1.78(a)(4) is amended to permit applicants to state domestic priority reference as required by 35 U.S.C. 119(e) in the Application Data Sheet.

  • This provision is effective on the date of publication in the Federal Register, Sept. 8, 2000.


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§ 1.84 - $130.00Standards for Drawings

  • Drawing standards mostly retained and will focus on:

    • scan-ability of drawings for publishing applications and patents

    • communication of the invention to the examiner

  • Eliminated three sets of black and white (“B/W”) photographs

  • Replaced petition to accept B/W photographs with

    • list of examples where a B/W photograph is acceptable, but

      • examiner may require a drawing

        • where a drawing would better illustrate the invention


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§ 1.85 - Corrections to Drawings $130.00

  • Period of time to file corrected or formal drawings after allowance is not extendable under § 1.136(a) or (b), § 1.85(c); see § 1.136(c).

    • fewer corrected or formal drawings will be filed after allowance in view of up front PG Pub review and correction cycle

    • applies to applications with a Notice of Allowability mailed on or after November 7, 2000

  • See changes to § 1.85(a) in the 18-month publication package (65 Fed. Reg. 57023, 9/20/00)

    • e.g., objections to the drawings will not be held in abeyance nor will such a request be considered a bona fide response, § 1.135(c)


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§ 1.96(c) - Computer Listings on Compact Disc $130.00

  • Replaces microfiche submissions (less expensive, more available)

  • Mandatory for computer program listings over 300 lines, optional for smaller listings

  • Listing must be an ASCII file (e.g. no proprietary file formats allowed)

  • Microfiche submissions under former rule may be made until March 1, 2001


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§ 1.97(b) - Filing Information Disclosure Statement (IDS) $130.00

  • Eliminated the 3-month window for filing

    an IDS in a CPA filed under § 1.53(d)

    Applicants must file any IDS under § 1.97(b) before the mailing of a first Office action on the merits in a CPA or RCE

  • If a 3-month window is desired, applicant may:

    • Request a 3-month suspension of action by the Office under §1.103

    • Pay filing fee later with a surcharge in response to missing parts notice


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§ 1.97(c) - Filing IDS Before $130.00Close of Prosecution

  • Added “or an action that otherwise closes prosecution”

    • To provide for types of actions that close prosecution other than final Office action and notice of allowance, e.g., an Ex parte Quayle action

  • Fee for an IDS submission under § 1.97(c)

    • Reduced from $240 to $180 (§ 1.17(p)) to reflect the average cost of processing an IDS submission filed under § 1.97(c)


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§ 1.97(d) - $130.00Filing an IDS After Close of Prosecution & Before Payment of Issue Fee

  • Eliminated the requirement for a petition

  • Replaced the requirement for a petition fee of $130 with an IDS processing fee of $180 (§ 1.17(p))

    • The IDS processing fee reflects the average cost of processing an IDS submission filed under § 1.97(d)

    • The fee for § 1.97(c) and (d) are now the same


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§ 1.97(e)(1) - Statement for Filing IDS under §§ 1.97(c) and (d)

  • Amended to require statement that the first citation of the item by a foreign patent office in a counterpart foreign application was not made, in any communication from the foreign office, more than three months prior to the IDS filing


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§ 1.98 - Content of IDS and (d)

  • Copies of any cited U.S. patent applications are required under § 1.98(a)(2)(iii)

    • Specification (including the claims), and the drawings, of the cited application,

      or

    • The portion of the application which caused it to be cited, including any claims directed to that portion


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§1.103 - Suspension of Action and (d)Requested by the Applicant

  • On filing a CPA or a RCE, applicant may request a suspension of action under § 1.103(b)-(c)

    • Maximum of 3 months

    • Requires processing fee set forth in § 1.17(i)

    • Office will still process for missing parts for CPAs, e.g., the basic filing fee

    • Payment of the RCE fee cannot be deferred

  • The suspension will give applicant time to submit an IDS or (preliminary) amendment


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§ 1.103(d) - Suspension of Action and (d)Deferral of Examination

  • Maximum of 3 years from the earliest filing date for which a benefit is claimed under

    35 U.S.C. §§ 119(a)-(d), (e), 120, 121, or 365

  • Requires processing fee under § 1.17(i) and publication fee under § 1.18(d)

  • Request will not be granted after the mailing of an Office action or a notice of allowance


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§ 1.103(d) - Suspension of Action and (d)Deferral of Examination

  • Applies to original utility or plant applications filed under § 1.53(b) (or international applications entered into the national stage) on or after November 29, 2000 (or applicant requested voluntary publication)

  • The application is in condition for publication as provided in § 1.211(c )

  • The applicant has not filed a nonpublication request under § 1.213(a) or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request


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§ 1.105 - Requirement for Information and (d)

  • Who can make a requirement for information?

    • Examiner or other Office employee

  • Who can be required to supply the required information?

    • Individuals identified under 37 CFR§ 1.56(c), or any assignee

  • What information can be required?

    • Information reasonably necessary to properly examine or treat a matter

  • What is an acceptable reply?

    • Information known and readily available that responds to the requirement

    • Any reply that states that information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will be accepted as a complete reply.


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§ 1.105 - Requirement for Information and (d)

  • How is the requirement made?

    • The action will state why the requirement is reasonably necessary

    • The action will specify the scope of the requirement.

    • It may be included in an Office action on the merits

      • Where the classified art of the patents and typical non-patent literature is adequately searched for the claimed subject matter

        • but either the application file or the lack of relevant prior art found in the examiner’s search justifies asking applicant if he/she has information which would be relevant to the patentability determination

    • It may be made separate from an Office action on the merits

      • Where the examiner’s preliminary analysis and search demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents and typical sources of non-patent literature


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§ 1.105 - Requirement for Information and (d)

  • How long will the applicant have to respond?

    • A requirement accompanying an action on the merits will have the same time period as the action on the merits, generally 3 months

    • A requirement separate from an action on the merits will generally have a 2 month time period

    • A reply, or a failure to reply, to a requirement for information will be governed by §§ 1.135 and 1.136

      • Extensions of time are available as with other Office actions

      • If no reply is made after the time period expires, the application becomes abandoned


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§ 1.105 - Requirement for Information and (d)Example Requirements

  • What are some examples of information that can be required?

    • Commercial Databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.

    • Search: Whether a search of the prior art was made, and if so, what was searched.

    • Related Information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.

    • Information Used to Draft Application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.

    • Information Used in Invention Process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.

    • Improvements: Where the claimed invention is an improvement, identification of what is being improved.

    • In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.


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§ 1.105 - Requirement for Information and (d)Examiner’s Response

  • What must the examiner do in response to applicant’s reply?

    • Examiner must consider all the information submitted in response to the § 1.105 requirement

    • Examiner must respond to applicant’s submission within 2 months of receipt

      • Applicant’s reply goes on the examiner’s amended application docket

    • Examiner may NOT make the next action a final rejection if the the next action relies on art submitted in response to the § 1.105 requirement and the application of such art in a rejection is not necessitated by amendment


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§ 1.105 - Requirement for Information and (d)Implementation

  • What is the plan to ensure proper implementation?

    • Initial Training

      • Examiners should narrowly define the scope of a requirement to minimize the burden on an applicant and because overly broad requirements

        • are difficult for applicants to comply with

        • create undue burdens on both the applicant and the examiner

        • create excessive amounts of information

      • A requirement under 37 CFR § 1.105 should not be a fishing expedition

    • Supervisory Review

      • Each Technology Center will provide supervisory review and authorization over all rule § 1.105 requirements prior to mailing

      • Directors will control the implementation within each Technology Center

    • Follow-Up Monitoring & Evaluation of Results

      • Effectiveness of Results

      • Reasonableness of Requirements

      • Evaluated within and across Technology Centers.


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§ 1.105 - Requirement for Information and (d)Relation to Rule § 1.56

  • How is the requirement for information under rule § 1.105 different from §1.56

    • Rule § 1.105 requirement is separate from the duty of disclosure under rule §1.56

      • any submission of art material to patentability must indicate that such art is submitted under the requirements of rule § 1.56.

      • any submission of art in response to a rule § 1.105 requirement must indicate that such art is submitted under the requirements of rule § 1.105 .

  • Rule § 1.105 requires information necessary for the Office to perform an examination on the merits, even though not necessarily material to patentability.

  • The rule § 1.56 duties of candor and good faith apply to applicant’s conduct in making a reply to a requirement for information under rule § 1.105.


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§ 1.111 - and (d)Reply to Non-Final Office Action

  • Second or subsequent supplemental reply (a third reply) may be disapproved under § 1.111(a)(2)

    • If it unduly interferes with the preparation of an Office action

  • The authority of disapproval under § 1.111(a)(2) will be delegated to the appropriate Group Directors


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Factors to be Considered under § 1.111(a)(2) and (d)

State of preparation of an Office action as of the date of receipt of the reply (§ 1.6)

AND

Nature of the changes to the specification or claims

For example, if an examiner has devoted a significant amount of time to preparing an Office action before receiving the second (or subsequent) supplemental reply and, because of claims added in such supplemental reply the examiner would have to spend significant additional time to revise the Office action, then denial of entry would be appropriate.


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When Denial of Entry under and (d)§ 1.111(a)(2) is not OK

If a second (or subsequent) supplemental reply merely cancels claims, eliminates rejections under 35 U.S.C. § 112 ¶2nd, or includes changes that were previously suggested by the examiner, then denial of entry would not be appropriate


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When Denial of Entry under and (d)§ 1.111(a)(2) is OK

If a second (or subsequent) supplemental reply would place a significant burden by:

  • adding new claims, or

  • amending the specification that changes the scope of the claims or raises a new matter issue,

    AND

    The examiner has devoted a significant amount of time to preparing an Office action before receiving such reply,

    Then denial of entry would be appropriate


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§ 1.115 and (d) - Preliminary Amendments

  • May be disapproved

    • If it unduly interferes with the preparation of a first Office action (same factors used in § 1.111)

  • To avoid § 1.115 issues, preliminary amendments should be filed:

    • Within 3 months from the filing date of an application filed under § 1.53(b) or from the entry date of the national stage under § 1.491 in an international application,

    • On filing date of a CPA filed under § 1.53(d), or

    • Within the period of suspension requested by applicant under § 1.103(b) in a CPA or RCE


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§ 1.121 - Amendment by Replacement Paragraph/Section/Claim and (d)

ADVANTAGES OF CHANGES TO RULE 1.121:

  • Rule language is clearer and easier to understand

  • Provides for amendment of the specification/claims by replacement paragraphs/sections/claims

  • Clean text in specs and claims is entered as official version and facilitates OCR scanning in patent publication process

  • Provides for marked-up version as an aid to examiners


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§ 1.121 - Amendment by Replacement Paragraph/Section/Claim and (d)Cont.

  • Eliminates handwritten red-ink amendment entries and claims with underlining and bracketing

  • Printed patents should have fewer errors

  • Improves efficiency of technical support when used with optional paragraph numbering

  • Effective Date: On or after November 7, 2000 (voluntary) March 1, 2001 (mandatory)


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§ 1.121(b) - Amendment by Replacement Paragraph/Section and (d)

How to make amendments to the specification:

  • Submit a clean (with no underlining or bracketing) amended paragraph/section with an instruction to substitute it for the pending paragraph/section as the official version (version to be entered into the record)

  • Identify the pending paragraph/section to be replaced by any clear instruction (e.g., paragraph [0045], the paragraph beginning on page x, line y; the 3rd full paragraph on p.3, etc.)

  • Also submit a marked-up version of the prior pending paragraph/section with all changes (relative to the prior paragraph) shown by any conventional comparison system as an aid to the examiner


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§ 1.121(b) - Amendment by Replacement Paragraph/Section and (d)

How to make amendments to the specification (cont.):

  • No marked-up version is required for any added (new) or deleted paragraph (with underlining and bracketing); an indication that the paragraph has been added or deleted is sufficient, e.g., “The paragraph beginning at p. 2, line 6, has been deleted.”

  • No replacement pages permitted

  • A substitute specification may be submitted for extensive amendments, but it must comply with § 1.125


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§ 1.121(c) - Amendment by Replacement Claims and (d)

How to make amendments to the claims:

  • Submit a clean (with no underlining and bracketing) amended claim as the official version with an instruction to substitute it for the pending claim with the same number; also submit a marked-up version of the prior pending claim with all changes shown by any conventional comparison system as an aid to the examiner

  • Any new or canceled claim does not have to be in marked-up version; an indication that claim X is new or claim Y was canceled is sufficient

  • Both the clean amended claim and the marked-up version should have the same expression: “amended,” “twice amended,” etc., in parentheses after claim number


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§1.121(c)(3) - Amendment by Replacement Claims and (d)

How to make amendments to the claims (cont.):

  • OPTIONAL: A clean set of all pending claims with the same numbers as the pending claims being re-presented can be submitted at any time (provided the requirements of §§ 1.116 and 1.312 are met)

  • This submission will be entered as the official version and will be construed as directing the cancellation of all previous versions of the re-presented claims

  • The absence of an accompanying marked up version constitutes an assertion that the claim has not been changed relative to the immediate prior version


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§ 1.121(c) - Amendment by Replacement Claims and (d)

How to make amendments to the claims (cont.):

  • A claim may be canceled by an instruction (e.g., “cancel claim 3”)

  • A canceled claim can be reinstated only by re-presentation of the complete text of the claim with a new claim number

  • The clean version will be printed in the patent; applicant must provide accurate version; examiner must ensure patentability of clean version


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FORMAT SLIDE and (d)Recommended Format for SubmittingAmendments with Replacement Paragraphs/Sections/Claims

  • The following FORMAT is recommended for the amendment portion of the amendment paper:

    • First: A clean version of each replacement paragraph/section/claim along with clear instructions for entry

    • Second: Starting on a separate page, all appropriate remarks/arguments, 37 CFR 1.111 and MPEP 714

    • Third: starting on a separate page, a marked-up version entitled: “Version with markings to show changes made”


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Amendment and (d)page 1


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Amendment and (d)page 2


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Amendment and (d)Page 3


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Amendment by Replacement Paragraphs/Claims and (d)37 CFR 1.121(g)Examiner’s Amendment Practice

To encourage continued use of current examiner’s amendment practice in order to expedite prosecution, and reduce applicant filings of formal amendments to incorporate agreed upon changes:

  • At the time of allowance, examiners will not be required to provide either a clean version or a separate marked-up version of paragraph(s) or claim(s) amended by an examiner’s amendment

  • Amendment(s) to paragraph(s)/claim(s) in an examiner’s amendment can be made by instruction to insert/delete specific word(s)


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Amendment by Replacement Paragraphs/Claims and (d)37 CFR 1.121(g)Examiner’s Amendment Practice (cont.)

  • A clean version of a paragraph/claim, or a portion of a paragraph/claim, submitted by applicant in a fax or e-mail may be printed and incorporated into an examiner’s amendment. A copy of the entire fax or e-mail should be printed and made of record as an attachment to the examiner’s amendment.

  • The examiner should mark the fax or e-mail attachment “requested” (in the same area as entry instructions are marked), then initial, so as to not cause a reduction of any patent term adjustment (37 CFR 1.704(c)(8)).

  • As the attachment is made a part of the examiner’s amendment, it does not get a separate PALM code. This precludes it from causing a reduction in any patent term adjustment.

  • The electronic version of any e-mail submission will not be saved once printed version becomes part of the application record


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Amendment Practice and (d)37 CFR 1.121

HOW TO TREAT NON-COMPLIANT AMENDMENTS:

  • LIE should send Notice of Non-Compliant Amendment Form to applicant for preliminary or non-final amdt.: -check only appropriate boxes 1-5 for type of problem, and

    -check a box for type of amendment involved

  • For non-compliant after-final amendment:

    examiner should handle via advisory action; do not use Notice of Non-Compliant Amdt. Form

  • Examiner may not waive clean version requirement; requirement for marked-up version does not have to be enforced if examiner wants to expedite prosecution


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§ 1.125 Substitute Specification and (d)

  • Substitute specification must be submitted in clean form and must be accompanied by marked up version showing changes

  • Paragraphs should be numbered as per § 1.52(b)(6) to facilitate amendment practice (§ 1.121); not necessary to show numbers as changes in marked up version


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§§ 1.131 & 1.132 - Affidavits or Declarations and (d)

  • §§ 1.131(a) and 1.132 are amended to now be applicable to rejections based on non-publication prior art available under 35 U.S.C. 102(a), e.g., public use by others.

    • This change is effective for any reply filed on or after the date of publication in the Federal Register, September 8, 2000.


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§ 1.136(c) - Extensions of Time and (d)

  • § 1.136 amended to include new §1.136(c) which states that the time periods, after allowance, for:

    • submitting an oath or declaration under § 1.63

    • submitting corrected or formal drawings under § 1.85(c)

      are not extendable. Effective date: when the Notice of Allowance is mailed on or after November 7, 2000

.


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§ 1.155 - Design Rocket Docket and (d)

Expedited examination of design patents if:

  • submission of request with $900 fee

  • drawings in compliance with § 1.84

  • statement that a preexamination search was conducted indicating the field of search

  • IDS submitted

  • application in condition for examination

    Effective on date of publication in Federal Register,

    September 8, 2000.


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§ 1.163 - Plant Applications and (d)

  • Deletes requirement for two copies of specification

  • Applicant should state the Latin name and the variety denomination of the plant claimed

  • Deletes the reference to a plant patent color coding sheet


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§ 1.173 and (d) - Reissue Specification, Drawings & Amendments

  • Consolidated all procedural requirements for preparing reissue specification, drawings and amendments into single rule

  • Specification (including claims) is required to be a copy of the pages of the original patent in double column format

    • Amendments via replacement paragraphs can be entered in double column format

  • Cutting and pasting to produce a specification in a single column format is no longer needed or desired


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§ 1.173 and (d) - Reissue Specification, Drawings & Amendments (cont.)

  • Clean copies of patent drawing sheets will be accepted in lieu of formal drawings if they meet § 1.84 criteria

  • Transfer of drawings from patent is no longer permitted

  • New drawings are required for new or amended figures after approval of proposed drawing (in red) by examiner


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§ 1.176 and (d) - Examination of Reissue

  • Restriction now permitted between original patent claims and added claims directed to a different invention; no restriction among patented claims can be made by examiner

  • Restriction would be based on same standard as in an original application

  • Original patent claims must be constructively elected unless original claims are disclaimed in reissue; withdrawal of disclaimer not permitted

  • Constructively elected claims examined in first reissue application; nonelected claims examined in divisional application(s)

  • Effective for reissue applications filed on or after November 7, 2000


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§ 1.176 and (d) - Examination of Reissue (cont.)

  • Continuation/Divisional reissues will continue to be announced in Official Gazette

  • Continuation/divisional reissue applications may be acted on sooner than two months after announcement in Official Gazette


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§ 1.177 and (d) - Issuance of Multiple Reissue Patents

  • Eliminates former requirements: (1) that multiple reissue applications be drawn to separate and distinct parts of the thing patented, (2) for simultaneous issuance, (3) for a petition for non-simultaneous issuance

  • Each sibling reissue application must cross reference each other sibling reissue application in specification, providing notice to public that more than one reissue patent may replace original patent

  • Original patent claims must be presented in each divisional or continuation reissue as either unamended (in only one reissue), amended, or deleted (bracketed)

  • Added claims to be numbered following highest numbered original claim

  • A divisional reissue drawn to only unamended original claims (which do not correct any error in original patent) cannot be issued, but will be recombined with sibling divisional reissue when latter is allowed


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§ 1.178 - Original Patent; Continuing Duty of Applicant and (d)

  • Offer to surrender original patent grant no longer required at filing, but actual surrender of original still required before allowance

  • Requires only a “statement” (and not an affidavit or declaration) of loss, if original patent cannot be located

  • Establishes ongoing duty of applicants to call attention of Office to prior or concurrent proceedings (e.g., litigation) directed to original patent


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§ 1.311(b) and (d) - Authorization to Charge Issue Fee

  • § 1.311(b) has been amended to only allow authorizations to charge issue fee to be filed after the mailing of the Notice of Allowance and Issue Fee Due (PTOL-85).

    • Payment of an incorrect issue fee or submission of a completed fee transmittal form (PTOL-85B) without payment will operate as a valid request to charge the correct issue fee to a previously authorized deposit account.


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§ 1.322 - Certificate of Correction Office Mistake and (d)

  • Incorporate provisions of 35 U.S.C. 254

  • The Director may issue a certificate of correction to correct a mistake which is clearly disclosed in the records of the Office:

    • At the request of the patentee or the assignee

    • Acting sua sponte

    • *Acting on information supplied by a third party

      * The Office is not obligated to act on or respond to a submission by a third party. Papers submitted by a third party will not be made of record nor retained by the Office.


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§ 1.323 - Certificate of Correction Applicant’s Mistake and (d)

  • § 1.323has been amended to provide that the Office may issue a certificate of correction under the conditions specified in 35 U.S.C. 255 at the request of the patentee or the patentee’s assignee upon payment of fee set forth in § 1.20(a)


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§ 1.366(c) and (d) - Maintenance FeesPatent and Application Nos. Required

  • § 1.366(c) has been amended to require that both the patent number and the application number be provided with any maintenance fee payment

    • Failure to provide both will result in:

      • if only the patent number is listed, the Office may attempt to verify the information, but may also simply apply the maintenance fee to the patent listed

      • if only the application number is listed, the Office will return of the fee (and the period for payment is not tolled)

  • Effective on date of publication in the Federal Register, September 8, 2000.


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§ 1.510 - and (d)Request for Reexamination Format

  • Specification (including claims) required to be copy of sheets of original patent in double column format.

  • Previously required in single column format.

  • Single column format no longer needed for entry of multiple amendments, since replacement paragraphs/claims now required.

  • This change corresponds with the § 1.173 reissue change. Reexamination and reissue provision correspondence is considered advantageous, in order to eliminate confusion.


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§ 1.530 (l) - and (d)Change of Inventorship

  • § 1.530 (l) added; to correct inventorship of a patent being reexamined, must submit petition for correction of inventorship which complies with § 1.324.

  • If petition under § 1.324 granted, certificate of correction to change inventorship is not issued; reexamination certificate to issue will contain the change-of-inventorship information (certificate of correction is merged with reexamination certificate).

  • In an instance where no reexamination certificate is issued (reexamination vacated or reexamination is denied), patentee may then request the inventorship correction by certificate of correction.


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§§ 1.730 & 1.740 and (d) -Patent Term Extension

  • clarifies who may sign an application for patent term extension (§ 1.730)

  • reduces required explanation as to how the patent reads on the approved product (§ 1.740(a)(9))

  • eliminates requirement for oath or declaration in application for patent term extension (§ 1.740(b))

  • effective for requests for extension which are filed on or after September 8, 2000.


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§ 1.821(c) - Nucleotide and/or Amino Acid Sequences and (d)

  • In lieu of paper copy, this is in addition to the CRF submission under § 1.821(e)

    • Must submit duplicate discs and the CRF even if the CRF submission under § 1.821(e) is the same as the Compact Disc under § 1.821(c)

  • Only ASCII files, no proprietary file formats

  • 72 characters per line

  • All § 1.52(e) requirements apply


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§ 3.71 - and (d)Prosecution by Assignee

  • Who can prosecute:

    • An individual assignee of the entire right, title and interest of the patent or trademark property

    • Multiple parties who together own the entire right, title and interest

      • All partial assignees,

      • All inventors who have not assigned their right, title and interest (§ 3.71 does not apply here since there is no assignee)

      • All partial assignees and inventors who have not assigned their right, title and interest

  • Assignee becomes of record in the application by filing a § 3.73(b) statement signed by a party who is authorized to act on behalf of the assignee


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§ 3.73 - Establishing Right of Assignee to Take Action and (d)

  • The assignee must be explicitly identified by name in a statement establishing ownership

  • Submission of § 3.73(b) statement is required in addition to, and as prerequisite for, the specific action taken by the assignee

  • Partial assignee must indicate in the § 3.73(b) statement the extent of its ownership interest


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§ 3.81 and (d) - Issue of Patent to Assignee

  • § 3.81(b) request for issuance to assignee after payment of the issue fee

    • requirement for a petition has been eliminated

  • Recordation of the assignment in Office assignment records is not required

    • The request under § 3.81(a) or (b) can be submitted with a § 3.73(b) statement (or rely on a previously submitted statement), and the § 3.73(b) statement should have a copy of the assignment attached, if it was not previously recorded


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§ 10.23(c)(11) - Permitted Alterations are not Misconduct and (d)

  • § 10.23(c)(11) has been amended to explicitly allow for the alterations permitted under § 1.52(c)

    • § 1.52(c) provides:

      • alterations to application papers must (rather than should) be made before the oath or declaration is signed

      • alterations, that do not include new matter, may be made in applications which include a copy of an oath or declaration from a prior application


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Compact Disc Submission and (d)Filing New Application


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Compact Disc (CD) Submissions and (d)

  • § 1.52 Generally defines requirements for submissions on compact disc

  • § 1.58 Requirements for tables submitted on compact disc

  • § 1.96 Computer listings on compact disc

  • § 1.821+ Nucleotide and/or Amino Acid Sequences on compact disc


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Create ASCII Files and (d)

Step 1: Create ASCII text files

- Select “text” as save “type” on file save menu


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Create CD Submission and (d)

Step 2: Copy files to create duplicate compact discs

COPY

ONLY

ASCII

FILES

ONLY

CD-ROM

or CD-R


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Create CD Submission and (d)(cont.)

Step 3: Read each file on each disc with an ASCII (text) viewer to verify:

- all data is present

- tables are accurately rendered to maintain rows and columns

-chemical and mathematical formulas are accurately rendered


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Create CD Submission and (d)(cont.)

Step 4: Verify file directory information: name, size, and creation date on each disc matches the information on:

  • list of discs and files on each disc in the transmittal letter

  • list of discs and files on each disc in the specification

  • verify duplicate discs are identical


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Create CD Submission and (d)(cont.)

Step 5: Label each compact disc as required by 37 CFR 1.52(e) (4) and (6) including “Copy 1” and “Copy 2” nomenclature

Step 6: Place each compact disc in a unsealed padded and protective mailing envelope


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Create CD Submission and (d)(cont.)

Step 7: Verify there is an incorporation-by-reference statement to material on compact discs in body of application

Step 8: Verify there is a statement in the transmittal letter indicating that duplicate discs are identical


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Create CD Submission and (d)(cont.)

Step 7: Verify there is an incorporation-by-reference statement to material on compact discs in body of application

Step 8: Verify there is a statement in the transmittal letter indicating that duplicate discs are identical


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