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San Diego Intellectual Property Law Association October 18, 2005

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San Diego Intellectual Property Law Association October 18, 2005

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    1. 10/12/05 1

    2. 10/12/05 2 Office of Patent Legal Administration Legal and policy guidance http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

    3. 10/12/05 3 Office of Patent Legal Administration Public Assistance Patentpractice@uspto.gov 571-272-7701 general patent policy questions 571-272-7702 PTA Help Line 571-272-7703 PGPub Help Line 571-272-7704 Hurricane Line

    4. 10/12/05 4 Topics Significant Office Statistics Initiatives for Reducing Patent Backlog and Enhancing Quality Expanding the Workforce & Telecommuting School of Examiner Education & Development (SEED) Shared Responsibility – Quality of Applications Submitted Rework and Continuing Applications Applications that Have Extraordinary Number of Claims Outsourcing PCT Search Pilot Program Pre-Appeal Brief Conference Pilot Program Improved Reexamination Process Final Rule: 35 USC 103(c) as Amended by the CREATE Act Final Rule: Claiming the Benefit of a Non-English Provisional Application, and Other Miscellaneous Matters

    5. 10/12/05 5 Significant Office Statistics Filings by Technology Center and Year Examiner Production Pendency Inventory by Technology Center and Art Quality Rework Staffing – Hiring and Attrition

    6. CurrentCurrent

    7. 10/12/05 7 UPR Applications Filed FY 03 filings 333452 FY 04 filings 355527 FY 05 expected filings 375080 FY 03 filings 333452 FY 04 filings 355527 FY 05 expected filings 375080

    8. 10/12/05 8 Production

    9.

    10. 10/12/05 10 FY 05 Patent Pendency (as of 9/1/2005)

    11. 10/12/05 11 First Action Pendency by Art Areas

    12. 10/12/05 12 TC Application Inventory

    13. 10/12/05 13 Inventory by Art Examples For Business Methods 34 = Cryptography 106 = Health CareFor Business Methods 34 = Cryptography 106 = Health Care

    15. 10/12/05 15 Quality of Products – FY 05

    16. 10/12/05 16 UPR Patents Issued October 18, 2004 update: Preliminary FY 04 data – 170,637 UPR patents issued (16,533 Design Applications Issued) August 25, 2004 update: Data on issue builds through Sept. 7th – 160,578 For fiscal year expect to issue between 169,000 and 170,000 July update: To date: 140,456 patents grant Expected: ~167,000 Goal: 174,655 Allowance rates drop to 65%; differences (expected and goal) equate to approx 2 allowances per examinerOctober 18, 2004 update: Preliminary FY 04 data – 170,637 UPR patents issued (16,533 Design Applications Issued) August 25, 2004 update: Data on issue builds through Sept. 7th – 160,578 For fiscal year expect to issue between 169,000 and 170,000 July update: To date: 140,456 patents grant Expected: ~167,000 Goal: 174,655 Allowance rates drop to 65%; differences (expected and goal) equate to approx 2 allowances per examiner

    18. 10/12/05 18 Technology Centers Rework* Statistics Lori Spector story Primary examiner does 1 maybe 2 “new” cases a quarter Excellent trainer and examiner Churning applications doesn’t maximize workflow We need to move to a system that files applications, prosecutes them and disposes of themLori Spector story Primary examiner does 1 maybe 2 “new” cases a quarter Excellent trainer and examiner Churning applications doesn’t maximize workflow We need to move to a system that files applications, prosecutes them and disposes of them

    20. 10/12/05 20 Hires and Attritions Current staffing Jan 31, 2005: 1600 has 179 GS 14’s and 15’s examiners – 43% of total, 1.79 to 1 ratio new hires 1700 has 280 GS 14’s and 15’s examiners – 64% of total, 8 to 1 ratio new hires 2100 has 128 GS 14’s and 15’s examiners – 23% of total, 1 to 1.56 ratio new hires 2600 has 192 GS 14’s and 15’s examiners – 29% of total, 1.28 to 1 ratio new hires 2800 has 331 GS 14’s and 15’s examiners – 47% of total, 2 to 1 ratio new hires 3600 has 199 GS 14’s and 15’s examiners – 46% of total, 2.2 to 1 ratio new hires 3700 has 235 GS 14’s and 15’s examiners – 54% of total, 1.9 to 1 ratio new hires 1544 primaries of 3667 examiners – 42% of total. 278 SPE’s. Current staffing Jan 31, 2005: 1600 has 179 GS 14’s and 15’s examiners – 43% of total, 1.79 to 1 ratio new hires 1700 has 280 GS 14’s and 15’s examiners – 64% of total, 8 to 1 ratio new hires 2100 has 128 GS 14’s and 15’s examiners – 23% of total, 1 to 1.56 ratio new hires 2600 has 192 GS 14’s and 15’s examiners – 29% of total, 1.28 to 1 ratio new hires 2800 has 331 GS 14’s and 15’s examiners – 47% of total, 2 to 1 ratio new hires 3600 has 199 GS 14’s and 15’s examiners – 46% of total, 2.2 to 1 ratio new hires 3700 has 235 GS 14’s and 15’s examiners – 54% of total, 1.9 to 1 ratio new hires 1544 primaries of 3667 examiners – 42% of total. 278 SPE’s.

    22. 10/12/05 22 How Can the USPTO Reduce the Patent Backlog? If the Office is to issue quality patents in a timely manner, we must fundamentally reform the way the Office does business and we must develop processes that will make the patent system more effectively serve its purposes. One Important Approach is “Hire More, Train Better, Retain Better, and Telecommute.”

    23. 10/12/05 23 Expanding the Workforce In FY05, the Office hired approximately 940 patent examiners (a 25 % increase in examining staff). The Office is planning to hire an additional 1,000 patent examiners each fiscal year, through fiscal year 2011.

    24. 10/12/05 24 Telecommuting for Patent Employees Telecommuting pilot program Approximately 200 patent volunteers Testing hardware, software, and business process configurations Goal: In FY06, 820 patent telecommuting participants By FY11 (five-year plan), approximately 3,000 participants.

    25. 10/12/05 25 Training Better School of Examiner Education & Development (SEED)

    26. 10/12/05 26 SEED Effective January 2006 Completely new approach to training new patent examiners Collegial and collaborative environment Up to eight months of intensive coursework On examination and relevant legal issues.

    27. 10/12/05 27 SEED - Goals Very significant increase in initial training Goal is to provide our Technology Centers with examiners who know how to draft complete and high quality Office actions when they “graduate” to examination art units

    28. 10/12/05 28 SEED – To Better Prepare Examiners The combination of more comprehensive initial training for a longer period of time Will provide our newest patent examiners confidence skills support network

    29. 10/12/05 29 SEED - Details Up to 8 months duration 1-2 Trainers per 16 Examiners Trainer assistants in addition to trainers for search & examination labs Initial Implementation with TC’s 2100/2600 Work on mock and real applications Examiners assigned to Art Units at about 4 month point

    30. 10/12/05 30 SEED – 2006 First year – 4 classes Starting January 23 May (late month) June (mid-month) September All TC 2100 & 2600 new examiners in new SEED program in 2006

    31. 10/12/05 31 Shared Responsibility … Quality of Application Submitted

    32. 10/12/05 32 Improve Quality of Applications Submitted If applications are Complete, clear, well-drafted, with well-identified, pertinent references, It would take less time to properly examine, permitting a focused examination on the most important aspect of innovation. A better input contributes directly both to speed of processing and to quality.

    33. 10/12/05 33 Improve Quality of Applications Submitted Focused Examination Patent examination that concentrates on evaluating the most pertinent information relevant to patentability increases the opportunity for the system to “get it right” the first time. By working to improve the ways that this information comes before the examiner, the Office and applicants will best achieve the goal of high quality patent grants.

    34. 10/12/05 34 Improve Quality of Applications Submitted Ensuring such a focused examination is a joint responsibility of the examiner and applicant: For applicants, this allows the proper assessment of any amendments or changes to the patent application and claims that may be required to result in a properly granted patent. For examiners, their examination should be focused on the prior art most relevant to determining whether the claimed invention is patentable.

    35. 10/12/05 35 Rework …and “Continuations”

    36. 10/12/05 36 Rework and “Continuations” More than 26% (FY04) and 28% (FY05) of FAOM are rework first actions*. This rework presents a significant obstacle to the ability of the Office to examine new and existing applications. The Office is presently evaluating ways to bring more discipline to Continuing application practice and request for continued examination (RCE) practice To increase the Office’s ability to focus on truly new applications and innovations. *first actions that are in a Continuation, CIP, or CPA application (but does not include divisional applications) or in an RCE. See slide 18.

    37. 10/12/05 37 Applications that Have Extraordinary Number of Claims

    38. 10/12/05 38 Extraordinary Numbers of Claims A small number of applications are filed with an extraordinary number of claims. These applications present examiners with enormous challenges in ascertaining the nuances and incremental differences among the claims presented. This has a negative impact on the examiner’s ability to conduct high quality examination. The burden also impedes the Office’s ability to promptly examine applications relating to other inventions. The Office are exploring ways to balance applicant’s needs for certain numbers of claims and examiner’s feasibility to effectively examine such a plethora of claims.

    39. 10/12/05 39 USPTO Contracts International Patent Application Searches to Commercial Firms Pre-OG notice available on the USPTO web site at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html.

    40. 10/12/05 40 Patent Cooperation Treaty (PCT) Search Pilot Program To determine whether : searches by commercial entities can maintain the accuracy and quality standards for searches conducted by the USPTO during the patent examination process while remaining cost effective.

    41. 10/12/05 41 International Application Searches USPTO expects over 45,000 requests to search and/or examine international applications. This is in addition to the 350,000 U.S. applications the agency receives each year.

    42. 10/12/05 42 Reason for Outsourcing Outsourcing allows USPTO to focus on reducing the backlog of pending national applications, thus Increasing productivity Enhancing quality Efficient and high quality government operations are cornerstones of the President’s Management Agenda.

    43. 10/12/05 43 Other Pilots Under Consideration The USPTO is also exploring arranging to have some of its PCT-related work, on a pilot basis, done by other established government intellectual property offices that currently perform PCT-related searches and examinations.

    45. 10/12/05 45 Pre-Appeal Conference Background 21st Century Strategic Plan – Quality Approximately 60% of all appealed cases are “not” forwarded to BPAI Implemented Pre-Appeal Brief Conference Pilot Program See New Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005)

    46. 10/12/05 46 Goals Avoid Filing Appeal Brief When You Can: Or, Alternatively, Reduce Size and Cost of An Appeal Brief Identify clearly improper rejections because of factual errors Identify clear absence of prima facie case Narrow focus to true issues in controversy

    47. 10/12/05 47 Why This Pilot Program? TC’s already provide appeal conferences after the submission of an Appeal Brief Over half of the appeal conferences result in allowance or reopening of prosecution Thus, this pre-brief review procedure may eliminate, or reduce, the time and expense to prepare an Appeal Brief and expedite the prosecution process.

    48. 10/12/05 48 Who Can Use This Procedure? Anyone who is filing a Notice of Appeal (except under patent reexamination)

    49. 10/12/05 49 What Do You Provide? Written Request Preferably, use the USPTO Form PTO/SB/33 Otherwise, label a request as “Pre-Appeal Brief Request For Review” Must be filed with the Notice of Appeal Arguments Not more than five (5) pages, excluding the cover request form Succinct, Concise & Focused Identification of CLEAR ERRORS

    50. 10/12/05 50 What is the Fee? At present, there is no fee for the request. The fee for the Notice of Appeal remains. The fee for the Notice of Appeal is non-refundable, even in the event of a favorable outcome from the Pre-Appeal Brief conference.

    51. 10/12/05 51 What Does the USPTO Do? Technology Center (TC) convenes a panel TC managers and conferees experienced in the pertinent field of technology Includes a SPE and examiner of record Panel reviews rejections identified by request, arguments submitted with the request, and application file A determination will be made as to whether an issue for appeal is present

    52. 10/12/05 52 When Will The Decision Be Mailed? Generally, decisions will be made and mailed within 45 days of receiving the request.

    53. 10/12/05 53 How Long Do You Have To File Appeal Brief Following Decision? You Have the Longer of Time Remaining From Notice of Appeal OR One Month From Mailing of Decision

    54. 10/12/05 54 RECAP Remember Use the USPTO Form, or Label your Request Form as “Pre-Appeal Brief Request For Review” Submit WITH Notice of Appeal, as a SEPARATE Document No Amendments, Affidavits, or Other Evidence No Request Fee, But Notice of Appeal Fee Still Required No More Than Five (5) Pages of Arguments Attached to the Request Form CLEAR, CONCISE, FOCUSED

    56. 10/12/05 56 Improved Reexamination Process Background 21st Century Strategic Plan- Timely Process Large number of pending reexamination proceedings over four years Action Plan Process ex parte reexam proceedings pending over 2 years by end of FY ‘05 This will eliminate 420 of 1200 currently pending proceedings Similar effort is being conducted for pending inter partes reexamination proceedings. The Office will implement an expanded review of all decisions in any reexamination proceeding.

    57. 10/12/05 57 Improved Reexamination Process A new separate Centralized Reexamination Unit (CRU) established 20 senior examiners to examine all new reexamination proceedings Panels to review all actions Firm processing time will be established for all reexamination proceedings so the Office will consistently handle the processing with high quality and with special dispatch set in the statute.

    58. 10/12/05 58 35 U.S.C. 103(c) as Amended by the Cooperative Research and Technology Enhancement (CREATE) Act (Public Law 108-453) Enacted December 10, 2004 and as Implemented by a Final Rule Entitled “Changes to Implement the Cooperative Research and Technology Enhancement Act of 2004,” 70 FR 54259 (September 14, 2005)

    59. 10/12/05 59 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) CREATE Act revised 35 U.S.C. 103(c) as follows: Former 35 U.S.C. 103(c) was redesignated as 35 U.S.C. 103(c)(1) (no substantial change to the text) New subsections 35 U.S.C. 103(c)(2) and (3) were established Effective Date: December 10, 2004 Applies to any patent granted on or after December 10, 2004 See slide 46 for more information regarding the effective date

    60. 10/12/05 60 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) CREATE Act allows certain multiple owners of patent applications or patents to be treated as a common owner for the purposes of 35 U.S.C. 103(c)’s exclusion of prior art only under 35 U.S.C. 102(e), (f) or (g) in a rejection under 35 USC 103(a). Avoids the need to form joint ventures to perform related research in order to obtain benefit under the prior version of 35 U.S.C. 103(c). The USPTO has published a final rule entitled “Changes to Implement the Cooperative Research and Technology Enhancement Act of 2004,” 70 FR 54259 (September 14, 2005) Effective upon publication and applies to any patent granted on or after December 10, 2004

    61. 10/12/05 61 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) In order to be treated as common owners under the CREATE Act, the following are required: The claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; The claimed invention was made as a result of activities undertaken within the scope of the agreement; and The application for patent for the claimed invention discloses, or is amended to disclose, the names of the parties to the agreement.

    62. 10/12/05 62 35 U.S.C. 103(c)(1) as Amended by the CREATE Act (P.L. 108-453) 35 U.S.C. 103(c)(1): Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. (formerly 35 U.S.C. 103(c) with minor changes)

    63. 10/12/05 63 35 U.S.C. 103(c)(2) (NEW) as Amended by the CREATE Act (P.L. 108-453) 35 U.S.C. 103(c)(2): For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if– (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. (emphasis added)

    64. 10/12/05 64 35 U.S.C. 103(c)(3) (NEW) as Amended by the CREATE Act (P.L. 108-453) 35 U.S.C. 103(c)(3): For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. (Emphasis added.)

    65. 10/12/05 65 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) Effective Date Information (see also slide 24): The revised 35 U.S.C. 103(c) applies to any reissue patent granted on or after its date of enactment. The recapture doctrine may prevent the presentation of claims in reissue applications that were amended or cancelled (e.g., to avoid a rejection under 35 U.S.C. 103(a) based upon subject matter that may now be disqualified under the CREATE Act) from the application which resulted in the patent being reissued. The 1999 change of “subsection (f) or (g)” to “one or more of subsections (e), (f), or (g)” in 35 U.S.C. 103(c) is now also applicable to applications filed prior to November 29, 1999 that were pending on December 10, 2004. The CREATE Act also includes the amendment to 35 U.S.C. 103(c) made by § 4807 of the American Inventors Protection Act of 1999 (see Pub. L. 106-113, 113 Stat. 1501, 1501A-591 (1999)), which only applied to applications filed on or after November 29, 1999.

    66. 10/12/05 66 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) Applicant may overcome a rejection under 35 U.S.C. 103(a) based upon subject matter (i.e., a patent document, publication, or other evidence) which only qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) by invoking 35 U.S.C. 103(c) as amended by the CREATE Act. Applicant cannot rely on the provisions of 35 U.S.C. 103(c) to overcome the following rejections: Obviousness double patenting rejections; and Rejections under 35 U.S.C. 102.

    67. 10/12/05 67 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by final rule (70 FR 54259) To overcome a rejection by invoking the joint research agreement provisions of 35 U.S.C. 103(c), applicant must: Provide a statement signed by a 37 CFR 1.33(b) party; and Amend the specification* to disclose the names of the parties to the joint research agreement (see 37 CFR 1.71(g) and 1.77(b)(4)); The final rule deleted the requirement to amend the specification to state either: The date that the joint research agreement was executed and a concise statement of the field of the claimed invention; or Where (i.e., by reel and frame number) this information is recorded in the Office’s assignment records *Unless the specification discloses the required information.

    68. 10/12/05 68 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by final rule (70 FR 54259) The statement must provide that: The claimed invention and the disqualified subject matter were made by or on the behalf of parties to a joint research agreement as defined by 35 U.S.C. 103(c); The joint research agreement was in effect on or before the date the claimed invention was made; and The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. (37 CFR 1.104(c)(4)(i)) The statement should be provided on a separate sheet which must not be directed to any other matters (37 CFR 1.4(c)).

    69. 10/12/05 69 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by final rule (70 FR 54259) If the applicant disqualifies the subject matter used in a rejection under 35 U.S.C. 103(a) in accordance with 35 U.S.C. 103(c) as amended by the CREATE Act and the final rule, During examination, the application and the prior art will be treated as if they are commonly owned for purposes of 35 U.S.C. 103(c)(1). See 37 CFR 1.104(c)(4)

    70. 10/12/05 70 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by final rule (70 FR 54259) A subsequent new double patenting rejection based upon the disqualified prior art may apply. See the double patenting guidelines in the final rule. Applicant may file a terminal disclaimer under 37 CFR 1.321(d) to overcome the double patenting rejection. Note: the disclaimer requires common enforcement of the involved patents in addition to a common term requirement.

    71. 10/12/05 71 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by final rule (70 FR 54259) Requirements for a terminal disclaimer under 37 CFR 1.321(d): The owners of the rejected application must: Waive the right to separately enforce the patents. See 37 CFR 1.321(d)(3). Agree that the patents shall be enforceable only during the period that the patents are not separately enforced. See 37 CFR 1.321(d)(3). Agree that such waiver is binding upon the owner, its successors, or assigns. See 37 CFR 1.321(b) The final rule eliminates any requirement in regard to the common licensing of the invention and the disqualified subject matter.

    72. 10/12/05 72 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by final rule (70 FR 54259) Requirements for a terminal disclaimer under 37 CFR 1.321(d) (cont’d): Comply with 37 CFR 1.321(b)(2)-(b)(4). 37 CFR 1.321(d)(1) Signed by applicant in accordance with 37 CFR 1.321(b)(1) or patentee in accordance with 37 CFR 1.321(a)(1), as applicable. 37 CFR 1.321(d)(2) The final rule eliminates the requirement for the owner of disqualified subject matter to sign the terminal disclaimer.

    73. 10/12/05 73 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by final rule (70 FR 54259) Brief Summary of Changes made by the final rule: Section 1.71: Section 1.71 is amended to further revise § 1.71(g). Section 1.71(g) specifically provides that the specification may provide the names of the parties to the JRA in order to meet that statutory requirement when invoking the “safe harbor” provision of 35 U.S.C. 103(c). The requirements for the execution date and a brief summary of the claimed invention, or the reel and frame number of the recorded JRA, were removed. Section 1.77: Section 1.77 provides for the names of the parties to a joint research agreement in the preferred arrangement of the specification. Section 1.104: Section 1.104(c)(4) is amended for consistency with the amendment to 35 U.S.C. 103(c) and to include the requirements for a statement to invoke the “safe harbor” provision of 35 U.S.C. 103(c). Section 1.109: Section 1.109 is deleted in the final rule. Guidelines are set forth in the final rule for double patenting situations which may arise as a result of the CREATE Act. The Manual of Patent Examining Procedure (MPEP), § 804, sets forth the conditions under which the Office will otherwise make a double patenting rejection.

    74. 10/12/05 74 35 U.S.C. 103(c) as Amended by the CREATE Act (P.L. 108-453) and as implemented by final rule (70 FR 54259) Brief Summary of Changes made by the final rule (cont’d): Section 1.130: Section 1.130(b) is reserved. Section 1.321: Section 1.321(d) is further amended to provide the terminal disclaimer requirements for the double patenting situations which arise as a result of the CREATE Act. The final rule eliminated the following requirements: (1) that the owner of the disqualified patent or application must sign the terminal disclaimer; and (2) that there is a restriction on separately licensing the application or patent and the disqualified patent or application. Section 3.11: Section 3.11(c) is further amended to provide that the Office will record a joint research agreement or an excerpt of a joint research agreement as provided in 37 CFR part 3 and to be consistent with 37 CFR 1.71(g) as amended in the final rule. Section 3.31: Section 3.31(g) sets forth the requirements for the cover sheet required by § 3.28 seeking to record a joint research agreement or an excerpt of a joint research agreement as provided by § 3.11(c).

    75. 10/12/05 75 Additional Information For more information, please contact the Office of Patent Legal Administration at (571) 272-7701 or e-mail to PatentPractice@USPTO.gov, or: Robert A. Clarke (571) 272-7735 Jeanne M. Clark (571) 272-7714

    77. 10/12/05 77 Final Rule for Claiming the Benefit of a Non-English Provisional Application and Other Misc. Matters 37 CFR 1.78(a)(5)(iv) is amended to require applicant to file: An English translation of a non-English language provisional application; and A statement that the translation is accurate, in the provisional application. In response to any notice mailed in a nonprovisional application that claims the benefit of the provisional application requiring the translation and statement, applicant must file: The translation and statement in the provisional application and, A confirmation in the nonprovisional application, unless applicant amends the first sentence of the specification or ADS to remove the benefit claim. Effective date- of course if translation was filed in nonprovisional after the effective date of the rule change, then examiner will not require translation to be re-filed in provisional.Effective date- of course if translation was filed in nonprovisional after the effective date of the rule change, then examiner will not require translation to be re-filed in provisional.

    78. 10/12/05 78 Final Rule for Claiming the Benefit of a Non-English Provisional Application and Other Misc. Matters Section 1.11(a) is amended to state that applications that have been published are open to public inspection. Published applications are available on the USPTO internet website if maintained in the image file wrapper (IFW) system.

    79. 10/12/05 79 Final Rule for Claiming the Benefit of a Non-English Provisional Application and Other Misc. Matters Section 1.133(a)(2) is amended to permit an interview before first Office action in any application if the examiner determines that such an interview would advance prosecution of the application. Examiner may require that an applicant requesting an interview before first Office action provide: a paper that includes a general statement of the state of the art at the time of the invention, an identification of no more than three (3) references believed to be the “closest” prior art, and an explanation as to how the broadest claim distinguishes over such references.

    80. 10/12/05 80 Final Rule for Claiming the Benefit of a Non-English Provisional Application and Other Misc. Matters Section 3.28 is amended to require a separate copy of the assignment document for patent and trademark cover sheets. Section 3.73(b)(1)(i) is amended to require, for patent matters, that the document(s) submitted to establish ownership under § 3.73(b) be recorded pursuant to § 3.11 in the assignment records. Statement under 37 CFR 3.73(b) may refer to attached assignment document, but document must also have been submitted for recordation. Old practice of one patent cover sheet, one trademark cover sheet, one assignment document could lead to problems If break in fax transmission or pages separated.Old practice of one patent cover sheet, one trademark cover sheet, one assignment document could lead to problems If break in fax transmission or pages separated.

    81. 10/12/05 81

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