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Recent Patent-Related Rule Making and Changes in USPTO Practice Philadelphia IPLA 9/25/03. Bob Spar Director Office of Patent Legal Administration (OPLA) (703) 308-5107, [email protected] TOPICS. Recent Rule Making/ Notices: Image File Wrapper (IFW) – Final Rule

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Recent Patent-Related Rule Making and Changes in USPTO Practice Philadelphia IPLA 9/25/03

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Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Recent Patent-Related Rule Making and Changes in USPTO PracticePhiladelphia IPLA 9/25/03

Bob Spar

Director

Office of Patent Legal Administration (OPLA)

(703) 308-5107, [email protected]


Topics

TOPICS

  • Recent Rule Making/ Notices:

    • Image File Wrapper (IFW) – Final Rule

      • Revised Amendment Practice

    • Elimination of CPA Practice –Final Rule

    • Notice of Foreign Filing – OG Notice

    • Reexamination Guidelines – OG Notice

    • Patent Cooperation Treaty - Proposed Rule Making

    • Clarification of Power of Attorney Practice, and Revisions to Assignment Rules –Proposed Rule Making

    • Customer Number Bar Code Labels – OG Notice

    • Batch Updates – OG Notice

    • Unity of Invention Study – OG Notice


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Image File Wrapper (IFW) – Final Rule

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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

IFW Implementation

  • The Office is implementing the Image File Wrapper (IFW) system which is an image technology system for storage and maintenance of records associated with patent applications.

  • Paper components of the application file contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications will be scanned into the IFW system as electronic image files.

  • All processing and examination will be performed with the electronic image files, instead of paper source documents, by all Office personnel.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

IFW Implementation(Continued)

  • 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

IFW Implementation (Continued)

  • 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

IFW Implementation (Continued)

  • The Office will supply copies of U.S. patents and U.S. patent application publications cited by the examiner to applicants for applications in IFW until the Office implements a system to permit applicants via Patent Application Information Retrieval (PAIR) system to access these documents electronically.

  • Foreign patent documents and non-patent literature will still be provided.

  • U.S. patents and application publications are currently available on the USPTO website at http://www.uspto.gov/patft/index.html


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

IFW Implementation (Continued)

  • Applicants may electronically access their applications in the IFW system via private side of PAIR.

  • The contents of published applications that are in the IFW system will 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

IFW Implementation (Continued)

  • 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.

  • By December of 2003, 1,700 examiners (from TCs 1600, 1700 and 2800) are expected to be working in IFW environment with all their applications scanned into the IFW system.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

IFW Rule Making

  • The Office received 20 written comments from intellectual property organizations, law firms, and patent practitioners in response to the notice of proposed rulemaking.

    • The comments are posted at http://www.uspto.gov/web/offices/pac/dapp/opla/comments/index.html


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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))


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

37 CFR 1.98

  • 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.


Information disclosure statement

Information Disclosure Statement

  • 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


Ids continued

IDS (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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Revised Amendment Practice37 CFR 1.121


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Revised Amendment Practice

  • Strict compliance is mandatory - 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


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Revised Amendment Practice (Continued)

Highlights:

  • 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.

  • 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Amendments to Claims

  • 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Amendments to Claims (Continued)

  • The seven (7) permissible status identifiers and their definitions, are:

    • (Original): Claim filed with original specification (not added by preliminary amendment and not previously amended).

    • (Currently amended): Claim being amended in the current amendment. Currently amended claims must include markings (strikethrough, double brackets, or underlining) to indicate changes.

    • (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)).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Amendments to Claims (Continued)

  • Seven (7) permissible status identifiers (cont.):

    • (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.

    • (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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Amendments to Claims (Continued)

  • Seven (7) permissible status identifiers (cont.):

    • (New): Claim being added in the current amendment paper. The text of the claim must be presented in clean form without underlining.

    • (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”.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.”


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Revised Amendment Practice (Continued)

  • Markings to Show Changes (cont’)

    • Deleted text must be shown by strikethrough(e.g., strikethrough), with 2 exceptions:

      • For deletion of five or fewer consecutive characters, double brackets [[ ]] may be used (e.g., [[eroor]]); and

      • 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”.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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”


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Example (Continued)

  • Non-compliant claim amendment example continued:

    • The Office would enter:

      • The amendments to the specification from the original amendment paper, and

      • The amendments to the claims that include the corrected claim listing from the paper filed in reply to the Notice.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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)).

    • Thus, 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Information Contacts

  • Any questions regarding the submission of amendments pursuant to the revised practice should be directed to Office of Patent Legal Administration (OPLA):

    • Call (703) 305-1616,

    • e-mail to [email protected], or

    • Contact one of the following Legal Advisors:

  • Elizabeth Dougherty ([email protected])

  • Eugenia Jones ([email protected])

  • Joe Narcavage ([email protected])


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Elimination of CPA Practice as to Utility and Plant Applications – Final Rule

Effective date: July 14, 2003

Elimination of 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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Notice of Foreign Filing

When a notice of foreign filing is required after a request for nonpublication request was made.

  • 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).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Notice of Foreign Filing

  • The notice 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.


Notice of foreign filing continued

Notice of Foreign Filing (Continued)

  • The notice 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 not 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Notice of Foreign Filing (Continued)

  • The notice 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Reexamination Guidelines

Effective Date: November 2, 2003

Revised Guidelines for Usage of Previously Cited/Considered Prior Art In Reexamination Proceedings, 1272 Off. Gaz. Pat. Office24 (July 1, 2003).


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Reexamination Guidelines

  • 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.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Patent Cooperation Treaty

January 2004 Revision of Patent Cooperation Treaty Application Procedure; proposed rulemaking, 68 Fed. Reg. 32441 (May 30, 2003), 1271 Off. Gaz. Pat Office 147 (June 24, 2003).

Final Rule expected to be published in early November 2003


Pct reform background

PCT Reform - Background

  • PCT Assembly Actions:

    • September 2001, adopted change in Article 22(1) time limit from 20 to 30 months

    • September 2002, adopted proposals as recommended by the PCT Reform Committee

      • Expanded International Search including the issuance of an International Search Opinion

      • Automatic designation and election of contracting parties

      • Simplified fee system with a “flat” international filing fee

      • Implementation of a “communication on request” system

      • Relaxation of signature and other requirements for filing

      • Provide reinstatement procedure in accordance with the PLT


30 month article 22 time limit

30-Month Article 22 Time Limit

  • Modification of Treaty itself

  • Increased time limit under Article 22(1) for national phase entry under Chapter I from 20 to 30 months (same as for Chapter II)

  • Entered into force, in general, on 01 April 2002

  • Applies to applications for which the 20-month time limit had not yet expired on 01 April 2002, and for which the acts necessary to enter the national phase had not yet been performed


Expanded search procedure

Expanded Search Procedure

  • When establishing the International Search Report, the ISA will also establish a Written Opinion

  • ISA Written Opinion, in most instances, 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 as a report with equal status to the IPER


Automatic designation election

Automatic Designation / Election

  • 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


Designation election impact

Designation/Election - Impact

  • 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


Fee structure

Fee Structure

  • 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


Filing requirements

Filing Requirements

  • 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


National stage reinstatement

National Stage Reinstatement

  • 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


National stage reinstatement impact

National Stage Reinstatement – Impact

  • 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


Pct proposed fees

PCT Proposed 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


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Power of Attorney Practice and Assignment Rules - Notice of Proposed Rule Making

  • Available on the USPTO web site at: http://www.uspto.gov/web/offices/com/sol/og/2003/week30/patclar.htm

  • No public hearings are scheduled.

Clarification of Power of Attorney Practice, and Revisions to Assignment Rules, 66 Fed. Reg. 38258 (June 27, 2003), 1272 OG 181 (July 29, 2003)(proposed rule).


Power of attorney practice and assignment rules

Power of Attorney Practice and Assignment Rules

Significant Changes Being Proposed

  • The terms “power of attorney” and “Customer Number” are defined. Power of attorney to specific attorneys limited to ten, or fewer.

  • If power of attorney is to be given to more than ten registered practitioners, applicants must use the Office’s Customer Number practice. (37 CFR § 1.32)

  • The “associate” power of attorney practice will be discontinued. (37 CFR § 1.34)

  • Only copies of assignment documents may be submitted. Original assignment documents will no longer be returned to applicants/patentees. (37 CFR § 3.24)


Customer number practice mpep 403 8 th ed 2001 rev 1 feb 2003

Customer Number PracticeMPEP 403 (8th Ed. 2001) (Rev. 1, Feb 2003)

  • Customer Numbers (previously "Payor Numbers") may be used to:

    • Submit a list of practitioners by Customer Number such that an applicant or an assignee may in a Power of Attorney appoint those practitioners associated with the Customer Number;

    • Designate the correspondenceaddress of a patent application by a Customer Number such that the correspondence address for the patent application would be the address associated with the Customer Number; and

    • Designate the fee address ( 37 CFR 1.363) of a patent by a Customer Number such that the fee address for the patent (for maintenance fee notices) would be the address associated with the Customer Number.


Customer number practice continued mpep 403 8 th ed 2001 rev 1 feb 2003

Customer Number Practice (Continued)MPEP 403 (8th Ed. 2001) (Rev. 1, Feb 2003)

  • Applicants may not appoint more than one Customer Number for a particular purpose (e.g., correspondence address).

  • Applicants cannot give a power of attorney to both practitioners associated with a Customer Number and to a list of practitioners.

  • See MPEP § 403 for more information.


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Customer Number Bar Code Labels

Customer Number Bar Code Labels and Papers with Shaded Portions will No Longer be Permitted in Correspondence for Patent Applications (signed July 15, 2003)

Available on the USPTO website athttp://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/barcodes.htm


Customer number bar code labels and papers with shaded portions will no longer be permitted

Customer Number Bar Code Labels and Papers with Shaded Portions will No Longer be Permitted

  • Customer Number Bar code Labels will no longer be permitted to be used in any correspondence to the Office.

    • Bar code readers cannot read the bar code on the label when it is displayed on a computer monitor for processing IFW applications.

  • Gray (non-white) backgrounds on forms or correspondence are no longer permitted.

    • The text on a gray (non-white) backgound may be illegible after scanning.

  • Clear labels are permitted if the Customer Number is in Arabic numerals (e.g., 10203) and is legible.

  • Questions should be directed to Karin Ferriter at (703) 308-6906 or to [email protected]


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Batch Updates

Notice of Elimination of Batch Update Practice to Change Power of Attorney, 1272 Off. Gaz. Pat. Office 24 (July 1, 2003)


Batch updates

Batch Updates

  • Effective June 5, 2003, the ability to use a "batch update" to change powers of attorney has been discontinued.

    • Individual power of attorney changes must be filed in each application!

  • The ability to use the batch update process for making changes in the correspondence address and the fee address in patent applications will continue to be permitted.

  • The practitioners associated with a customer number may still be changed by filing a request or form PTO/SB/124.

  • Questions regarding batch updates or Customer Number practice should be directed to the Electronic Business Center by telephone to 866-217-9197 (toll-free), 703-305-3028, 703-308-6845 or by e-mail to [email protected]


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Unity of Invention Study

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).


Unity of invention study

Unity of Invention Study

Key Milestones in 21st Century Plan

  • November 2003: Publish paper (Green Paper) on options/proposals and business impact analysis.

  • January 2004: Hold public hearings on Unity options outlined in the Green Paper.

  • April 2004: Publish final report (White Paper) on implementation of Unity of Invention Standard.

  • May 2004: Draft necessary legislation.


Unity of invention study continued

Unity of Invention Study (Continued)

Issues for Comment in Published Notices

Issue 1:Should the USPTO study ways to adopt EPO claim treatment practice, including normally allowing only one independent claim per category of invention, when considering ways to adopt a Unity of Invention standard?

Issue 2: If the USPTO adopts a Unity of Invention standard, should the USPTO provide applicants the option of a PCT-style Unity of Invention practice to pay for examination of additional inventions that lack Unity of Invention in the same application?


Unity of invention study continued1

Unity of Invention Study (Continued)

Issues for Comment (continued)

Issue 3:Should the USPTO adopt, for national applications, the practice used currently under the PCT of examining the first claimed invention where there is a holding of lack of Unity of Invention?

Issue 4:When adopting the Unity of Invention standard, should the USPTO follow the EPO practice of performing only a “partial search” if the examination of the entire scope of the claims is unduly burdensome due to non-prior art issues?


Unity of invention study continued2

Unity of Invention Study (Continued)

Issues for Comment (continued)

Issue 5:Assuming that there will be extra costs of examination under Unity of Invention, which fees (e.g., filing fee, issue fee, and maintenance fee) should be increased to recover the extra costs?

Issue 6:How should work be assigned to ensure that examination quality would not suffer if examiners have to examine multiple inventions from different disciplines in a single application?


Unity of invention study continued3

Unity of Invention Study (Continued)

Issues for Comment (continued)

Issue 7: Should the USPTO consider using its request for continued examination or RCE authority under 35 U.S.C. 132(b) to permit applicants after prosecution has been closed on a first invention to pay an RCE fee and submit or rejoin claims to additional inventions that either depend from or otherwise include all of the limitations of the allowed claims?

Issue 8:Should the USPTO consider using its request for continued examination or RCE authority under 35 U.S.C. 132(b) to permit requests that the USPTO continue examination of claims which were withdrawn for consideration (rather than file a divisional application)?


Unity of invention study continued4

Unity of Invention Study (Continued)

Issues for Comment (continued)

Issue 9: Should the USPTO consider:

  • seeking a change to 35 U.S.C. 121 to adopt a Unity of Invention standard;

  • maintaining the current restriction practice in the USPTO; and

  • modifying the USPTO rules and procedures to adopt aspects of Unity of Invention practice without making any statutory changes


Unity of invention study continued5

Unity of Invention Study (Continued)

Issues for Comment (continued)

Issue 10: Are there other solutions which have not been addressed in the request for comments?


Check the uspto web site for important announcements

Check the USPTO web site for important announcements

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Revised amendment practice web page

Revised Amendment Practice Web Page


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Image File Wrapper Web Page


Recent patent related notices

Recent Patent-Related Notices


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Information Contacts

  • Office of Patent Legal Administration – (703) 305-1616 or e-mail to [email protected]

  • IFW – Final Rule – Jay Lucas (703) 308-6868, Robert Clarke (703) 305-9177, or Robert Spar (703) 308-5107

  • Amendment Practice – Elizabeth Dougherty (703) 306-3156, Eugenia Jones (703) 306-5586, or Joe Narcavage (703) 305-1795

  • Access under 37 CFR 1.14 – Karin Ferriter (703) 306-3159, or Michael Lewis (703) 305-5585

  • Power of Attorney and Assignment (NPR) – Karin Ferriter (703) 306-3159

  • Reexamination- Jerry Dost (703) 305-8610 or Ken Schor (703) 308-6710

  • Reissue- Joe Narcavage (703) 305-1795


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

Information Contacts (Continued)

  • Electronic Filing, CDs – Michael Lewis (703) 305-5585 or Jay Lucas (703) 308-6868

  • Comments on Unity Study – Robert Clarke (703) 305-9177

  • Elimination of CPA Practice – Eugenia Jones (703) 306-5586

  • Notice of Foreign Filing – Joni Chang (703) 308-3858 or Mark Polutta (703) 308-8122

  • Customer Number and Bar Code Labels – Karin Ferriter (703) 306-3159

  • Batch Updates - Karin Ferriter (703) 306-3159

  • PCT Application Procedure - Richard R. Cole(703) 305-6639


Recent patent related rule making and changes in uspto practice philadelphia ipla 9 25 03

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