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SDIPLA May 24, 2007

2. Topics to be discussed. Part I: OED NPRs: 1 published, 2 pendingRecent Patent Office Notices:Examining cases with Nucleotide Sequences, 1316 OG 122, (3/27/07)Change in Procedures for Handling Omitted Items, 1315 OG 103 (2/20/07)Electronic Notification of Outgoing Correspondence, 1314 OG 1321

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SDIPLA May 24, 2007

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    1. 1 SDIPLA May 24, 2007 Part 1: Recent Significant USPTO Examination Related Actions Part 2: Tips on Filing and Prosecuting Patent Applications Robert J. Spar Former Director of Office of Patent Legal Administration Deputy Commissioner for Patent Examination Policy bob.spar1@comcast.net (301) 460-1231

    2. 2 Topics to be discussed Part I: OED NPRs: 1 published, 2 pending Recent Patent Office Notices: Examining cases with Nucleotide Sequences, 1316 OG 122, (3/27/07) Change in Procedures for Handling Omitted Items, 1315 OG 103 (2/20/07) Electronic Notification of Outgoing Correspondence, 1314 OG 1321 (1/16/07) Australia extends providing Patent Search/Examination Services, 1/16/07 Recent Final Rules published: Changes to: Facilitate Electronic Filing of Patent Correspondence, 1315 OG 57, (2/13/07) Implement Priority Document Exchange Between IPOs, FR 1664, (1/16/07) Disclosure Document Program Eliminated, effective 2/1/07, 71 FR 64636 PCT NPR; Interim Notice: 72 FR 7583, (2/16/07); (posted 3/30/07) Accelerated Examination (AE) Program, started 8/25/06 1st patent under AE program already issued, March 13, 2007 Part II: Tips on Filing and Prosecuting Patent Applications OED = Office of Enrollment and Discipline NPR=Notice of Proposed Rule Making

    3. 3 OED Proposed Rulemakings (OED = Office of Enrollment and Discipline) Changes to Representation of Others Before the USPTO; Supplemental Notice of Proposed Rule Making (NPR), 72 FR 9196 (2/28/07)); 1316 OG 123 (3/27/07) Proposals re conduct of investigations and disciplinary proceedings Provisions for conducting investigations What are sanctions for violations of § 11.18(b)(2) Discipline for disbarment, suspension for ethical or professional misconduct elsewhere, or conviction of a serious crime Practice before the Office is defined: Includes all areas of prosecuting patent and trademark cases before the Office Drafting patent applications, representing one before OED, is included When work under supervision of registered practitioner is permitted When state (not federal) law controls permitted work, not registration Contracts (drafting or selecting), such as an assignment or license(s), although comments are requested on when execution of a standard assignment may be incidental to filing an application, and permitted

    4. 4 OED Proposed Rulemakings (Cont’d) (OED = Office of Enrollment and Discipline) Note: This Supplemental NPR (described on the prior slide) replaces OED proposals* included in the prior NPR published December 12, 2003, in 68 FR 69441. * Other OED proposals (in the prior NPR) that are still pending, and which will be included in a future OED NPR, are: Proposed changes to the substantive ethics rules for registered practitioners. These proposals, which govern the conduct of recognized patent practitioners and others practicing before the Office, remain under consideration by the Office. Proposed requirements for annual dues, and CLE. These proposals are dependent upon the development of electronic systems for implementation. Accordingly an NPR on these issues will not be published until such electronic systems have been developed. * The provisions on enrollment (e.g., taking the agents exam) were adopted in a final rule on July 26, 2004, 69 FR 35428.

    5. 5 Recent Patent Office Notices 1. Examining cases with Nucleotide Sequences, 1316 OG 122 (3/27/07) Office may apply restriction criteria in MPEP Chapter 800 to limit examination to a single nucleotide sequence. MPEP 803.04 is superceded by the Notice, which also rescinds the 1996 waiver at 1192 OG 68 (Nov. 19, 1996) that permitted up to 10 independent and distinct molecules described by their nucleotide sequence to be examined in a single application. 2. Change in Procedures for Handling Omitted Items, 1315 OG 103 (2/20/07) If a notice of omitted items is received, applicant must timely reply with an appropriate amendment (e.g., a substitute specification) if it is required in order to accept an application as deposited. It is no longer permitted to accept the nonprovisional application as deposited by failing to reply within the set time period, and later filing an appropriate amendment. 3. Electronic Notification of Outgoing Correspondence, 1314 OG1321 (1/16/07) Instead of receiving Office actions by USPS mail, in the pilot program, Private PAIR users (who get access via a CN) get an electronic e-mail notice that an action is in the Office’s official electronic file, and it must be retrieved via Private PAIR. Full Implementation is expected around June 2007. It will be optional. 4. Australia extends providing Patent Search/Examination Services, 1/16/07 Initial project to handle 1200 PCT cases is extended for 1 year.

    6. 6 Recent Final Rules Published 1. Changes to Facilitate Electronic Filing of Patent Correspondence, Final Rule, 1315 OG 57 (2/13/07); Effective date: 1/23/07 ? Certain National Stage correspondence submitted via EFS-Web may rely on the EFS-Web acknowledgment receipt to prove receipt by the Office (like a post card receipt); ? A new certificate of EFS-Web is established. It is similar to the certificate of mailing or transmission practice under § 1.8(a) whereby an EFS-Web certificate can be relied upon by the EFS-Web sender to have the correspondence treated as received by the Office for timeliness purposes as of the date Officially submitted, and not as of the date of actual receipt. Thus, an EFS-Web transmission with a certificate sent from the west coast at 11:59 PM (user has clicked the submit button on the Confirm and Submit screen after the correspondence has been uploaded to the USPTO server for user review) would be considered to have been timely submitted on the last day of the period for reply, even though it was actually received in the Office after expiration of the period for reply. § 1.8(a)(1)(i)(c) Rule sections are revised to delete all portions related to the Office’s prior e-filing systems, which have been discontinued, § 1.4; EFS-Web is now the sole system for e-filing. Section 1.4(d)(3): No changes to certifications on Office forms (e.g., oath/dec forms, TD forms, petition forms, and non-pub request form) may be made. If other existing text is modified, all text identifying it as an Office form must be removed. Presenting an Office form to the Office is a certification of no alterations, except as permitted by EFS-Web. See notice for guidance as to what, and what cannot be, changed on Office forms. Certifications are on oath, decs, TD’spetition forms, non-pub request form If form is modified - removal is required of: form number, and OMB approval info, in header and footer. If a static form is modified to add additional signature blocks, removal of identifying info is req’d. EFS-Web forms can be customized in certain cases, for ex, signature blocks can frequently be added.Usage of “add” and “remove” buttons is permitted.Certifications are on oath, decs, TD’spetition forms, non-pub request form If form is modified - removal is required of: form number, and OMB approval info, in header and footer. If a static form is modified to add additional signature blocks, removal of identifying info is req’d. EFS-Web forms can be customized in certain cases, for ex, signature blocks can frequently be added.Usage of “add” and “remove” buttons is permitted.

    7. 7 Recent Final Rules Published 1. Changes to Facilitate Electronic Filing of Patent Correspondence, Final Rule, 1315 OG 57 (2/13/07); Effective date: 1/23/07 (Cont’d) § 1.33(a): Revised to provide for electronic availability (viewing) of Office correspondence; instead of receiving mailed communications. For E-Filing Info: See EFS Legal Framework <http://www.uspto.gov/ebc/portal/efs/legal.htm> and EFS-FAQ web page <http://www.uspto.gov/ebc/efs_faq.htm> NOTE: You cannot use EFS-Web to file papers in: reexams, reissues, OED matters, secrecy order cases, contested cases at BPAI (unless authorized), public use proceedings, or non-application matters; or to submit: a certified copy (i.e., for foreign priority per 35 USC 119), 3rd party papers under § 1.99 or 1.291, or a maintenance fee. See MPEP 2510 for MFEE submissions (payment via the Internet is permitted at www.uspto.gov). Each EFS-Web submission must be limited to a single application; (multiple) correspondence for multiple cases NOT permitted in an EFS-Web submission. Piecemeal replies over multiple EFS-Web sessions discouraged Advantages of EFS-Web: Much simpler to use; uploading material is similar to uploading attachments to a web-based e-mail account; and paying fees is similar to buying a product through the Internet. The Office’s acknowledgment receipt contains a full listing of the correspondence submitted; is usually sent to the submitter almost instantaneously after Official submission, and is a legal receipt like a post card receipt

    8. 8 Recent Final Rules Published (Cont’d) 2. Changes to Implement Priority Document Exchange Between IPOs*, Final Rule, 72 FR 1664 (1/16/07); Effective Date: 1/16/07 Instead of applicants having to supply a paper certified copy of a foreign priority application, applicants may request, w/o a fee, that the: USPTO electronically retrieves certified copy(ies) from other participating IPOs other participating IPOs electronically retrieve certified copy(ies) of US patent applications from the USPTO A negotiated priority document exchange agreement is required between the USPTO and the other IPOs 1st agreement has been negotiated with the EPO so priority documents may be exchanged between the 2 offices electronically, free of charge to applicants Appropriate requests and permissions are required using new Office forms: PTO/SB 38: To request the USPTO to retrieve an e-copy of a prior filed foreign application from another participating IPO PTO/SB 39: To permit other participating IPOs to retrieve an e-copy of an application filed in the USPTO. The request form should be filed prior to the subsequent foreign application filing to ensure that it is lkely that the participating foreign IPO will be successful in retrieving a copy from the USPTO. Permission is only required prior to PGPub. * IPO - Intellectual Property Office

    9. 9 Recent Final Rules Published 2. Changes to Implement Priority Document Exchange Between IPOs, Final Rule, (Cont’d) Priority document exchange between USPTO and JPO to start later this year. The Office shall post notification of agreements in OG, with the effective date. The direct electronic exchange of copies of foreign priority documents is an exception to the requirement that an applicant must provide a certified copy of a counterpart foreign application to be entitled to a right of priority under 35 U.S.C. 119(a)-(d). This is permitted because the AIPA of 1999 revised § 119(a)-(d) to provide that the Director “may” require, instead of the former version which “required”, a certified copy be submitted. If applicant makes a proper request (using PTO/SB 38), and an electronic copy is imported from another participating IPO by the USPTO, the obligation to supply a certified copy (in the US application) would be satisfied. Applicant should check private PAIR to see if the USPTO successfully retrieved the foreign priority document An English language translation may still be required under certain circumstances. Big benefits to applicants: fees eliminated and processing costs reduced

    10. 10 PCT NPR: To conform to April 2007 Revision of PCT Procedures 72 FR 7583 (2/16/07), 1316 OG 59 (3/13/07) 37 CFR is proposed to be amended to conform to certain amendments made to Regulations under the Patent Cooperation Treaty (PCT) that will take effect on 4/1/07. An IA’s right to priority may be restored in certain situations (between 12 and 14 months)* A missing portion of an IA may be inserted w/o loss of the IA filing date. Note: effectively implemented by adding an incorporation by reference statement on the PCT request form. Search fee, and supplemental search fee, for IA’s to be revised to more accurately reflect the cost of conducting a search and preparing a Chapter I written opinion in an IA: Increased to $1,800 (from $1,000), with no reduction for a prior filed application under 35 USC 111(a). *The USPTO has taken a reservation against the proposed restoration of an applicant’s right to claim priority in an IA (which is being proposed to bring the provisions of the PCT into closer alignment with the provisions of the Patent Law Treaty (PLT)), because the PLT has not yet been legislatively enacted yet in the US. This means that a national stage application in the US (entered under 35 USC § 371), or a 35 USC § 111(a) application which claims benefit under 35 USC §§ 120 and 365(c), would not be entitled to a restored priority since it would not be in compliance with 35 USC 119, 120 and 365.

    11. 11 PCT NPR: To conform to April 2007 Revision of PCT Procedures Interim Procedures In OG Notice (signed/posted on March 30, 2007, see http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html) Interim procedures are set forth to implement the 4/1/07 PCT regulation changes Re insertion of missing portion of an IA w/o loss of IA filing date, and clarifying procedures to correct an obvious mistake in an IA: Office will implement these changes under the general authority granted under 35 USC § 364(A) when acting as a RO, ISA or IPEA per the terms of the treaty and regulations Re specific provisions for later submission of drawings now in §1.437(a) and (b): The specific provisions of § 1.437(a) and (b) are waived, sua sponte, per § 1.183 in favor of more applicant friendly provisions of amended PCT Rule 20 Re requests for restoration of right of priority to be treated, in interim, under § 1.182: Grantable requests must be filed w/i 2 months from date of expiration of priority period but, as previously noted, any later application which enters the national stage under § 371, or any later application filed under § 111(a), will not be entitled to such a restored priority Re proposed increases in search and supplemental search fees: Current fees remain in effect until such time as a final rule is issued and becomes effective Int’l Search Fee: $300 if prior 35 USC § 111(a) application meets § 1.445(a)(2)(i) or (ii) requirements Int’l Search Fee: $1,000 in all other situations Supplemental Search Fee: $1,000 per invention Questions: Contact Richard Cole at (571) 272-3281 or by fax to (571) 273-0459

    12. 12 Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination (AE) 71 FR 36323 (June 26, 2006); 1308 OG 106 (July 18, 2006) Available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html Effective August 25, 2006

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    15. 15 The Office is receiving about 25 per month, or about a rate of 300 per year. Applications are classified in various technologies: Electrical, Mechanical, Games and Business Methods. Some applicants appear to be filing groups of requests 1st patent under the AE program has already issued: Issued on March 13, 2007; filed on Sept. 29, 2006, Thus, issued in less than 6 months, As average pendency time in the same art (ink cartridge technology) is 25.4 months. Net time savings: 18 months

    16. 16 An application filed before August 25, 2006 can enter this pilot program through the filing of a continuation. Before filing, to increase the probability that the filing will be acceptable, check out the information posted on the USPTO’s Internet Web site at: http://www.uspto.gov/web/patents/accelerated See especially the “Guidelines for Applicants” document. The Sample Search Document may be particularly helpful to searchers for providing information in the proper format for submission to the Office.

    17. 17 Do not file a preliminary amendment. Incorporate any new text into the application as filed. The explanation of patentability must discuss obviousness as well as anticipation. For more information, please contact the Office of Patent Legal Administration at (571) 272-7701 or e-mail to PatentPractice@USPTO.gov

    18. 18 Part II Tips on Filing, and Prosecuting, Patent Applications

    19. 19 Part II - Topics Covered Electronic Filing Tips Pre-examination Tips Pre-grant Publication Tips Examination Processing Tips Post Allowance Tips General Practice Tips Reexamination Tips Further Information

    20. 20 I. Electronic Filing Tips Use a Customer Number (CN): Consider using a CN in an application for 2 purposes, to designate: 1) The Correspondence Address, and 2) The practitioners associated with the CN as having Power of Attorney (POA). A practitioner associated with a CN (when CN is designated as the correspondence address) may, via the Internet, view the Office’s patent application image file wrapper (IFW) through the Office’s Private PAIR (Patent Application Information and Retrieval) system. Easy to see if correspondence has been received in the Office Easy to see exactly what is in the application file If a CN is designated as the correspondence address in many applications, an address change in all applications can be effected by an att’y of record just changing the CN data (of the address associated with that CN). If a CN is designated as the power of attorney in many applications, an attorney/agent addition or deletion in all applications can be effected by just changing the CN data (of the practitioners associated with that CN). To change to a different CN, a separate POA must be filed in each application.

    21. 21 I. Electronic Filing Tips If you do not have access to the Office’s Private PAIR today, here is what you need to do: Apply for a customer number (CN) and a Public Key Infrastructure (PKI) certificate from the Office’s Electronic Business Center (EBC). Instructions may be found at the following Internet link: http://www.uspto.gov/ebc/portal/infocustomernumber.htm Contact the EBC for assistance or to answer questions. (Call 866-217-9197 or 571-272-4100 or visit the EBC web page: http://www.uspto.gov/ebc/ebc_help.htm)

    22. 22 I. Electronic Filing Tips Use Office’s EFS-Web to electronically file documents in PDF format directly with the USPTO: Applications: new utility, provisional, design, and National Stage applications, and International Applications in the US receiving office; and Follow-on documents (e.g., amendments and RCEs) for previously filed applications. EFS-Web submissions get an electronic receipt in reply, and are quickly viewable in PAIR. File any continuing application as a new application (do not file as a follow-on document); Separately EFS-Web file in parent application any required ext. of time fee as a follow-on document If there is a delay in electronically returning a filing receipt to an EFS-Web filing, wait or call the EBC; do not resubmit.

    23. 23 Electronic Filing Tips - E-Petitions New: An E-Petition May be filed via EFS-Web: If E-filed petition is acceptable, a petition grant decision will be immediately returned to the submitter. First Electronic Petition Type: To reinstate patents that have expired for unintentional failure to pay the required maintenance fees at 3.5, 7.5 or 11.5 years. See §1.378(c); http://www.uspto.gov/ebc/portal/announcements.htm Additional E-petition types are being developed. E-Petition may be filed by registered practitioner, assignee of the entire interest, or one or more patentees; and by registered and unregistered EFS users. Guidelines and instructions are found at the following Internet links: http://www.uspto.gov/ebc/portal/efs/sb0066e_fill%20.doc http://www.uspto.gov/ebc/portal/efs/petition_quickstart.pdf

    24. 24 Electronic Filing Tips - E-Petitions Advantages of E-Petitions: Petitions meeting filing criteria are automatically granted because: Submission will be automatically checked to make sure all required information, and fees, are correct, and submitted. Petition decision is available for viewing and printing right away. Office systems are updated, and information forwarded for publication in the OG to indicate patent rights have been reinstated. Copies of the petition and the decision are loaded directly into IFW. Decision may be inspected by the public if patent file is currently viewable in PAIR.

    25. 25 II. Pre-examination Tips - Forms Use the current USPTO prepared forms. Do not use old versions of the forms because they probably do not comply with the current rules and practices. For example, do not use old versions of the oath or declaration forms that do not have the correct statement regarding duty to disclose under §1.56. Current USPTO forms can be found at: http://www.uspto.gov/web/forms/index.html Many of the forms are electronically fillable. Do not use a combined declaration/power of attorney form, use separate declaration and separate power of attorney forms.

    26. 26 II. Pre-examination Tips - Forms Do not alter the language on the USPTO forms. Altering the language might mislead the USPTO official to accept the altered certification or statement that might otherwise not be acceptable. If a form is altered by non-USPTO personnel (e.g., a practitioner), the following must be removed from the altered form: The USPTO form number; The statement regarding approval; The OMB number; and The USPTO collection information in the footer. See http://www.uspto.gov/web/forms/index.html

    27. 27 II. Pre-examination Tips - Application Data Sheets 37 CFR 1.76 Use an Application Data Sheet (ADS) to provide application bibliographic data:  Improved accuracy of filing receipts. The need for corrected filing receipts related to USPTO errors will be significantly reduced. Application data will be accurately uploaded into Office systems. Application prosecution delays reduced Accurate bibliographic data will be in patent application publications. Changes/corrections to a foreign priority claim, a domestic benefit claim, spelling of inventor name(s), residence info, etc. are simpler to make if an ADS is used. A form is now available: Form SB14, and it is a Form-Fillable PDF http://www.uspto.gov/ebc/portal/forms.htm

    28. 28 Use a Supplemental ADS to correct, modify or augment an original ADS, and also when no original ADS was submitted. A Supplemental ADS must be completely filled in, including: all seven section headings, all appropriate data for each section heading, and Identification of the information that is being changed, preferably with underlining for insertions, and strike-through or brackets for text removed. Bibliographic information supplied on ADS, or Supplemental ADS: 1. Applicant information (name, residence, mailing address, citizenship) 2. Correspondence information (indicating a CN is suggested) 3. Application information (title, suggested classification and TC, suggested drawing figure, docket number, type of application, total number of drawing sheets) 4. Representative information (a CN (suggested), or individual reg. #s, but a separate POA is also req’d) 5. Domestic benefit claim(s) (Appl #, filing date, status and specific relationship) 6. Foreign priority information (Appl #, country and filing date for each foreign application for which priority is claimed, as well as any prior filed cases) 7. Assignment information (name and address, but separate recording is also req’d) II. Pre-examination Tips - Application Data Sheets 37 CFR 1.76

    29. 29 II. Pre-examination Tips – Preliminary Amendments New applications with amendments: Avoid filing a preliminary amendment with a new application. Make all edits before filing an application. For example, just submit a (clean) specification, or entire set of (clean) claims, with all desired changes made. The Office will count the pages of any preliminary amendments submitted with a new application filing in determining the application size fee. If the amendment includes an original (marked-up) and a substitute (clean) specification, the Office will count the pages of the marked-up copy of the original, and the clean copy of the substitute specification, in determining the application size fee. If you file a preliminary amendment to the specification (e.g., of a replacement paragraph) with a new application filing, or after the original filing but before preparation for PGPub: The Office will mail a notice requiring a substitute specification for PGPub purposes. Exceptions: title change, new or replacement abstract, replacement claim listing, and adding or amending a benefit claim(s).

    30. 30 II. Pre-examination Tips – Preliminary Amendments Continuing Applications: Do not use preliminary amendments on filing. Rather, include only the desired set of claims and all changes to the specification in the application to be filed. For continuation and divisional applications: Do not include any new matter in the desired set of claims and the revised specification. Consider making benefit claim(s) in an ADS Submit a copy of the declaration under § 1.63 from the prior application. A new oath or declaration is not required even if the written description and set of claims differ from those of the prior application so long as there is no new matter.

    31. 31 II. Pre-examination Tips - Benefit Claims MPEP 201.11 When a Prior Nonprovisional Application is relied upon: Make sure to include a specific reference in: the first sentence(s) of the specification; or the application data sheet (ADS). A specific reference requires: Application number of the prior-filed nonprovisional application; and Specific relationship (i.e., continuation, divisional, or continuation-in-part) of the applications. Exception: If the application is a design CPA, the request for CPA is the required specific reference. See §1.53(d)(7). Note: “Continuing” is not a specific reference. Example: “This application is a continuation of Application No. 10/---, filed---.” Do not submit a benefit claim in a request for continued examination (RCE) because an RCE is not a new application.

    32. 32 II. Pre-examination Tips - Benefit Claims MPEP 201.11 When benefit claim involves a chain of prior nonprovisional applications: State the relationship for each application (in the chain) relative to an immediate prior application, as a continuation, divisional, or continuation-in-part, to establish copendency throughout the entire chain. Double check each individual application in the chain to make sure it has a proper benefit claim to its prior application(s). Examples: “This application is a continuation of Application No. C, filed ---, which is a divisional of Application No. B, filed ---, which is a continuation-in-part of Application No. A, filed ---.” “This application is a continuation-in-part of Application No. X, filed ---, which is a divisional of Application No. Y, filed ---, and also a continuation-in-part of Application No. Z, filed ---.”

    33. 33 II. Pre-examination Tips - Benefit Claims MPEP 201.11 When benefit claim includes a prior international application (IA): Make sure that the specific reference to an IA includes the: International application number; International filing date (not the § 371(c) compliance date); and Specific relationship of the applications. Examples: 1. This application is a continuation of International Application No. PCT/US--/---, filed ---. 2. This application is a continuation of Application No. 10/---, which is the National Stage of International Application No. PCT/US--/---, filed ---. 3. This application is a continuation of International Application No. PCT/US--/---, filed ---, which is a continuation of U.S. Application No. 10/---, filed ---. When you file a § 371 (national stage) application of an IA: – Do not submit a benefit claim to the IA. Not only is such a benefit claim improper, but it may confuse the Office and cause the filing to be treated as a continuation application under 35 USC 111(a) (see Example 1 above), instead of a national stage filing.

    34. 34 II. Pre-examination Tips - Benefit Claims MPEP 201.11 When benefit claim is to a Prior Provisional Application: Make sure to include a specific reference in: the first sentence of the specification; or the application data sheet (ADS). In this situation, a specific reference requires only: The application number of the prior provisional application. Example: This application claims the benefit of U.S. Provisional Application No. 60/---, filed ---. No relationship should be included in the specific reference. If a relationship (as a continuation, divisional or C-I-P) is indicated, it may cause the Office to construe the benefit claim to be under 35 USC 120 (rather than under 35 USC 119(e)). If the benefit is under 35 USC 120, the patent term of any resulting patent will be measured from the filing date of the provisional application.

    35. 35 II. Pre-examination Tips - Benefit Claims Benefit Claim Pitfalls: The failure to timely submit the specific reference, is considered a waiver of any benefit claim - unless a petition under 37 CFR 1.78(a)(3) and surcharge are filed. Thus, make sure the specific reference is timely submitted, which is within the later of: Four months from the actual filing date of the later-filed application, or Sixteen months from the filing date of the prior filed application (see 37 CFR 1.78(a)(2)(ii)). Problems that arise when a benefit claim is not timely submitted Publication will be delayed from when it should have been published, The publication may not include the benefit claim; thus the PGPub would have a later (inaccurate) prior art date under 35 USC 102(e)(1), and Applicant would have to file a petition under § 1.78(a)(3) (asserting that the delay was unintentional) and pay the (steep) surcharge to overcome the waiver and be able to make the benefit claim.

    36. 36 III. Pre-grant Publication Tips If you do not want your application to be published (PGPubbed): Before filing an application, check to see if required threshold condition exists, namely that: the invention has not been and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication of any application. If the threshold condition exists, use USPTO form PTO/SB/35 when filing a utility or plant application. This will ensure compliance with the requirement to conspicuously request non- publication on filing. NOTE: Non-publication requests after filing are not permitted. Note: PGPubs will generally include all preliminary amendments submitted in time to be included in the publication. Thus, if you want the PGPub to include information that was not included in the application as filed, make sure to submit an appropriate preliminary amendment more than 4 months before the expected publication date. New matter is not permitted Amendments to the specification may require a sub specification. See prior slide.

    37. 37 III. Pre-grant Publication Tips To ensure correct, accurate information is published: assignment information, make sure to include any assignment information in the transmittal letter, or ADS, or a timely submitted Supplemental ADS, or else the PGPub will not. accurate spelling of inventor names or assignees, use an ADS, or a supplemental ADS, since the data on an ADS is automatically uploaded (thus avoiding transcription errors), and the data taken from an ADS is relied upon when there are inconsistencies in the application papers. Information on filing receipt: Review the filing receipt which list the inventors, title of the invention, benefit claims, projected publication date, and assignment information; and Request correction before export of data for publication. 

    38. 38 III. Pre-grant Publication Tips If you want to have your application republished to correct an error by applicant under § 1.221(a), remember to submit an electronic copy of the application filed in compliance with EFS requirements, and the appropriate fee. MPEP 1130. If you want to have your application republished to correct an error by the Office under § 1.221(b), Request must be filed within 2 months of the publication, and include a showing of material error(s) made by the Office. Applicants often file requests that are late (i.e., after 2 months from publication), and fail to recite material errors. MPEP 1130. Do not request republication if error(s) are not material. MPEP 1130.

    39. 39 IV. Examination Processing Tips – Pre-Appeal Brief Conference How to avoid common errors when requesting a pre-appeal brief conference: Send in the request with the Notice of Appeal. Wait until you get an advisory action on an after-final proposed amendment. Attach no more than five pages to the cover form. It does not matter what is on the extra pages, the Technology Center counts the pages and if there are over five, the request is dismissed. Do not send in a supplemental request. If prosecution is reopened prior to a decision by the BPAI, and the applicant wants to file another appeal, File a second notice of appeal (and appeal brief). No second Notice of Appeal fee is due unless the appeal fee has been increased, in which event, only the difference would have to be paid.

    40. 40 IV. Examination Processing Tips - How to file for additional inventions with added disclosure How to prosecute an improved invention independently of the initial invention: File a new application (rather than a CIP application) for only the new invention but: do not include a benefit claim to the initial application. Critical factors: 1. Longer Patent Term is obtained The patent term of any resulting patent on the new application would be longer than any resulting patent from a CIP application. 2. The prior filing date does not provide any benefit for the new invention anyway. The claims of a CIP application (assuming they are directed to the improved invention and are not supported by the prior application) would not have received the benefit of the earlier filing date of the prior application.

    41. 41 IV. Examination Processing Tips - Review all prior art applied, or cited As to prior art references applied by the examiner in a rejection: It is suggested that you review each entire reference, not just the part relied upon by the examiner in the rejection. Sometimes other portions of a reference have contradictory teachings or disclosures which you may be able to rely on in a rebuttal of the examiner’s position. As to prior art references that you intend to submit in an IDS: Review each reference before filing the IDS to avoid submission of: irrelevant information cumulative information claims that are unpatentable over the IDS information. See 37 CFR 10.18(b)(2) - requires “an inquiry reasonable under the circumstances” before submission of paper to the Office.

    42. 42 V. Post Allowance Tips - Always timely return PTOL-85 Part B Always Reply to a Notice of Allowance and Fee(s) Due by returning a completed Part B of form PTOL-85. Even if an issue fee has been previously paid and another Notice of Allowance and Fee(s) Due is subsequently mailed (which indicates the prior payment such that no fees are actually due), or Even if applicant is paying the issue fee and/or publication fee electronically, Applicants are required to timely reply to the Notice by submitting a completed Part B of the form PTOL-85, or its equivalent, in order to request the reapplication of the previously paid issue fee, and to update assignee and attorney information.

    43. 43 V. Post Allowance Tips - If you want to file an IDS Try to send in information disclosure statements (IDSs) early in the examination process. If an IDS is filed after the payment of the issue fee, the following is required in addition to the IDS: A petition for withdrawal from issue under § 1.313(c) and A request for continued examination in compliance with § 1.114.

    44. 44 V. Post Allowance Tips - If a last minute withdrawal from issue is needed Petitions to Withdraw from Issue: Hand-carry to the Office of Petitions Seventh floor of the Madison West building 600 Dulany Street Alexandria VA 22314 At the guard station in Madison West (near the elevators), ask the security guard to call the Office of Petitions at 571-272-3282 for delivery assistance. Hand-carried papers will be accepted on business days between the hours of 8:30 a.m. until 3:45 p.m.

    45. 45 V. Post Allowance Tips – Patent Term Extension/Adjustment Eligibility Check the filing date of your application to see which provisions apply: According to § 1.701, extensions due to examination delay are very limited and apply only to original applications, other than designs, filed on or after June 8, 1995 and before May 29, 2000. According to §§ 1.702-1.705, adjustments due to examination delay are less limited and apply to original applications filed on or after May 29, 2000.

    46. 46 V. Post Allowance Tips – How to avoid Patent Term Adjustment reductions What to do to avoid reductions: File replies within three months of the mail date of the Office action By EFS-Web, Express Mail, hand carry, or fax, and Avoid first-class mailing prior to notice of allowance. File drawings that meet the requirements of §1.84 upon filing, or during examination. Filing drawings after the notice of allowance will cause a PTA reduction. Include a § 1.97(e) “timeliness” statement if possible when filing an IDS to avoid a reduction of any PTA. See §1.704(d). Avoid filing any of the following as they will cause PTA reductions: Supplemental papers (e.g., supplemental amendments); Not fully responsive (but bona fide) replies; Noncompliant amendments; and Papers filed after a notice of allowance, including: drawings, priority documents, written status inquiries, and supplemental oath/declarations.

    47. 47 V. Post Allowance Tips – How to review Patent Term Adjustment (PTA) figures Note that a terminal disclaimer will limit any PTA Review the PTA determination on the Notice of Allowance The patent term adjustment determinations which appear on Notices of Allowance may be checked in public/private PAIR. Timely file any request for reconsideration on the PTA within the time periods set forth in §1.705(b) (no later than payment of issue fee) Include the required fee with the request to avoid dismissal Review the PTA determination again on the Patent Grant. The final PTA determination on the patent may change. Timely file any request for reconsideration on the PTA within the time period set forth in § 1.705(d) (w/i 2 months from patent grant) Include the required fee with the request to avoid dismissal

    48. 48 V. Post Allowance Tips – What if you get too much Patent Term Adjustment What should you do if you believe there is too much PTA given? Submit a letter titled “LETTER REGARDING PTA DETERMINATION.” No fee is required. Such a letter should not cause a PTA reduction.

    49. 49 VI. General Practice Tips - Who can sign papers submitted to the Office Signature requirements for submitted papers: Make sure that papers submitted for corrected filing receipts, supplemental application data sheets, requests for corrected publication, etc., are signed by a registered practitioner, applicant or, under certain circumstances, an assignee Not by non-registered personnel such as paralegals or legal administrators. See 37 CFR 10.18(a) and (b).

    50. 50 VI. General Practice Tips - S-signatures Consider using an S-signature on documents in the following situations: A practitioner creates a document and S-signature signs it on his/her computer. The practitioner can then: Facsimile transmit the document to, or EFS-Web file the document with, the Office directly from his or her computer; or Print the document and then facsimile transmit, mail, or hand-carry the paper document to the Office. A declaration, including a declaration under § 1.132, is prepared by the practitioner, saved, and then electronically transmitted (by an e-mail) to the inventor/declarent: The declarent opens and then S-signs the document on his/her computer. The S-signed document is then saved, and then electronically sent back to the practitioner, e.g., via another e-mail. The practitioner can then facsimile transmit the document to, or EFS-Web file the document with, the Office directly from his or her computer. Alternatively, the S-signed document can be printed out, and then mailed, faxed or hand-carried to the Office.

    51. 51 VI. General Practice Tips - S-signatures Suggestions for making a S-signature: The S-signature should include the first and last name of the person who signs the document between two single forward slash marks. Example: /John Smith/ rather than /JS/ or /s/. Although initials are permitted in an S-signature under § 1.4, such an S-signature might cause delays because Office personnel might question whether the S-signature with initials only is properly signed.

    52. 52 VI. General Practice Tips - Payments of fees to Office Avoid drafting a check to the USPTO for services on an account with insufficient funds. Avoid placing a stop payment on a check for USPTO services. Placing a stop payment on a check to circumvent rules of practice is not appropriate. Consider replenishing your deposit account at the USPTO, and paying a maintenance fee, on-line, via the Internet. https://ramps.uspto.gov/eram.

    53. 53 VI. General Practice Tips - What do you do when you have a problem? Before you contact the USPTO (e.g., USPTO help lines or the examiner) to ask a question: Try to first do some research to find the answer to the question, Such as by consulting the current version of the Manual of Patent Examining Procedure (8th Ed., Rev. 5, August 2006) (MPEP), and the USPTO website. The MPEP is available at: http://www.uspto.gov/web/offices/pac/mpep/mpep.htm Do not ask non-practitioner support staff (e.g., legal secretaries) to contact the USPTO to discuss the merits of a patent application.

    54. 54 VI. General Practice Tips - General prosecution suggestions Proofread claims for clarity and precision. Present all cogent arguments and evidence before final rejection. If the examiner is ignoring a claim limitation, consider initiating a personal or telephonic interview as it may facilitate the prosecution to completion. Do not initiate a reply on the absolute last day of the statutory period, if possible. Don’t personally attack the examiner in reply to an Office action. Follow the chain of command: first, call the examiner; if he is non-responsive or unavailable, second, contact the Supervisor; third step is the Technology Center Director.

    55. 55 VI. General Practice Tips - Amendments in Reissues Amendments in Reissue applications: Make amendments in reissue applications in accordance with § 1.173, not § 1.121 Make all changes in the amendment relative to the patent, not the previous amendment Be aware that if amendments are made after the filing of the original oath or declaration, a supplemental oath or declaration with “all errors” language will be required to be filed before Notice of Allowance. See § 1.175(b).

    56. 56 VI. General Practice Tips - Reissue of a patent with a C of C, and multiple reissues Make sure that all Certificates of Correction that were issued for the patent are incorporated into the application for reissue without markings. The corrections are part of the original patent at the time the reissue is filed. See MPEP 1411.01. Make sure that any every parent and child reissue application (filed for the same patent) cross-references each other. See § 1.177 and MPEP 1451.

    57. 57 VI. General Practice Tips – How to resolve amendment questions. If you are uncertain on how to submit a compliant amendment, helpful information is available on the USPTO web site: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/moreinfoamdtprac.htm The page includes a sample amendment, a FAQ document (questions and answers), a very detailed slide set and equivalent text version, and other important information. In a replacement listing of claims, do not present the text of canceled claims following cancellation. If you have a question related to a Notice of Non-Compliant Amendment, please direct it to the person who signed the notice.

    58. 58 VII. Reexamination Tips - Questions with not so obvious answers 1. Can a reexamination request be withdrawn? 2. How can a jurisdictional challenge to a reexam be made? 3. What claims should a reexam be requested on? 4. What references should be included in the request? 5. How should amendments in a reexamination be made? 6. Is notification of prior/concurrent proceedings req’d?

    59. 59 VII. Reexamination Tips - Can a request for reexam be withdrawn? 1. No: A request for reexamination cannot be withdrawn After the request for reexamination is filed in the Office, No abandonment, withdrawal or striking of the request is permitted (see MPEP 2210 and 2610); and No fee refund is permitted. § 35 U.S.C. 42(d) – Refund only for "any fee paid by mistake or any amount paid in excess of that required.” 37 CFR 1.26(a) – “A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee.” Placing a stop payment on a check for PTO services to circumvent statute and rules of practice is not appropriate and raises professional conduct issues.

    60. 60 VII. Reexamination Tips – Can a reexam be challenged on ultra vires issues? 2. Yes: Petitions may be filed to assert that a reexamination order does not raise a SNQ, as a challenge to the USPTO’s jurisdiction to conduct reexamination (under the “ultra vires” doctrine). Petitions directed to matters which are properly appealable should not be filed under the guise of a jurisdictional challenge. Issues that are appealable, and not petitionable, are whether: a reference teaches what the order applies it for; a reference is a prior patent or a printed publication; and a second SNQ has been raised, once a first SNQ has been clearly raised The USPTO will uphold an order for reexamination as being jurisdictionally proper, unless the USPTO has clearly exceeded its statutory authority, acting in “brazen defiance” of its statutory authorization. See Heinl v. Godici, 143 F. Supp. 2d 593, 601 (E.D. Va. 2001). SNQ = Substantial New Question

    61. 61 VII. Reexamination Tips - What claims in a patent should a reexam be requested on? 3. Include All Claims For Which Reexam Is Desired in Request If reexamination requested for less than all of the patent claims - the USPTO will determine if an SNQ has been raised only on the claim(s) for which reexamination was requested. Requester cannot complain if USPTO exercises its discretion and does not address all (other) claims, since it is requester who chooses not to provide a proposed SNQ for the USPTO to review. In the examination stage of the proceeding, the USPTO will generally only examine claim(s) for which: reexamination was requested, and a substantial new question of patentability (SNQ) was raised. See MPEP 2240 and 2640.

    62. 62 VII. Reexamination Tips - What references should be included in a request for reexam? Include (cite) only those references which are relied upon to raise a SNQ Do not include any references which are not relied upon to raise an SNQ. If any references are submitted without an explanation as to why the reference raises a SNQ, the request will not be accorded a filing date, and the requester will be notified to take appropriate corrective action(i.e., delete, or supply the required explanation). Thus, do not cite references just because they were of record in the patent, or references which you want to just make of record. Any cited reference in the request must be relied on to raise a SNQ. An IDS may be later submitted to cite other references if so desired. Note: If requester is the patentee, the requester may not argue that a submitted reference does not raise an SNQ, and that no order for reexam should be issued.

    63. 63 VII. Reexamination Tips – How should Amendments be made? 5. Amendments in reexamination must be made in accordance with 37 CFR 1.530(d)-(l), not 37 CFR 1.121. All changes in the amendment should be made relative to the patent, not the previous amendment. No broadening permitted: an amendment cannot broaden beyond the scope of the original patent claims. Any Certificates of Correction that were issued for the patented file must be incorporated into the reexam claims (or amendment) without markings showing the change(s). This is because the corrections are part of the original patent at the time the reexamination is prosecuted.

    64. 64 VII. Reexamination Tips – Is notification of prior/concurrent proceedings required? 6. Yes: The USPTO must be notified of any prior or concurrent court proceedings as to any patent being reexamined. Patent owner has duty to do so. See §§ 1.565 and 1.985(a). Third party permitted to do so. See MPEP 2282 and 2686. Notification paper must be confined to bare notice of court proceedings or court actions. Discussion of merits is prohibited. Notification should not include voluminous copies of litigation papers. Submission of voluminous papers, e.g., depositions, briefs, motions, burden the USPTO with additional handling, delay the reexamination, and inappropriately obscure the pertinent issues. Litigation papers that specifically address issues in the proceeding, and/or serve to explain a prior patents or printed publications may be submitted and will be considered on the record.

    65. 65 VIII. Further Information Technology Center Telephone Contacts Technology Center 1600 571-272-1600 Technology Center 2800 571-272-2800 Technology Center 1700 571-272-1700 Technology Center 2100 571-272-2100 Technology Center 2900 571-272-2900 Technology Center 2600 571-272-2600 Technology Center 3600 571-272-3600 Technology Center 3700 571-272-3700

    66. 66 VII. Further Information General Information Number 800-786-9199 or 571-272-1000 Central Facsimile Number 571-273-8300

    67. 67 VIII. Further Information USPTO Phone Numbers This Organization At This Number Provides Information On: Assignment Branch 571-272-3150 or Office of Document Services: USPTO recordation 800-972-6382 of assignments Board of Patent Appeals 571-272-9797 Status of pending appeals & oral & Interferences (BPAI) hearing requests CD-Rom & DVD Sales 571-272-5600 Sales of Patent and Trademark information Certificates of Correction 703-305-8309 How to correct a patent Certification 571-272-3150 or Office of Document Services: 800-972-6382 Obtaining certified copies of patents Central Reexam Unit(CRU) 571-272-7705 Reexaminations located in the CRU Deposit Accounts 571-272-6400 Office of Finance: How to set up an account & status

    68. 68 VIII. Further Information USPTO Phone Numbers (cont’d) This Organization At This Number Provides Information On: Electronic Business Center 571-272-4100 or Fax problems with 571-273-8300, 866-217-9197 EFS and PAIR Enrollment & Discipline 571-272-4097 The Patent Practitioner’s exam, registration Fee Questions 571-272-6400 Office of Finance: Patent & Trademark fees File Information Unit (FIU) 703-308-2733 Inspecting and copying publicly available files Filing Receipts 571-272-4000 OIPE - Status, corrections, copies of filing receipts Finance, Office of 571-272-6400 Fee payment information Foreign Filing License 571-272-8187 Licensing & Review: Filing in a foreign country Freedom of Information Act 571-272-3000 Office of the General Law: Questions about FOIA

    69. 69 VIII. Further Information USPTO Phone Numbers (cont’d) This Organization At This Number Provides Information On: Initial Patent Exam. (OIPE) 571-272-4000 Applications that are located in OIPE Inventors Assistance Center 800-PTO-9199 General questions on patent process, forms, information packets Licensing & Review 571-272-8203 Applications relating to national security Maintenance Fees 571-272-6400 Office of Finance: Payment of maintenance fees Public Search Room 571-272-3275 Search resources available to the public Patent Publications 571-272-4200 or Applications that are in the 888-786-0101 publication cycle Patent Copy Sales 800-972-6382 How to order patent copies Refunds 571-272-6400 Office of Finance: How to get a refund

    70. 70 VIII. Further Information Office of the Deputy Commissioner for Patent Examination Policy (DCPEP) Office of Patent Legal Administration (OPLA) 571-272-7701 – Legal questions line (policy, rules, MPEP) 571-272-7702 – Patent Term Adjustment (PTA) & Extension (PTE) 571-272-7703 – Questions relating to Reexamination, Reissue and the Revised Amendment Practice (37 CFR 1.121) 571-272-7704 – Questions related to Hurricane Katrina relief, Benefit claims (35 USC 119(e), 120, 121 and 365(c)) and 35 USC 102(e) Office of Petitions 571-272-3282 – Petitions Help Desk Office of Patent Cooperation Treaty Legal Administration 571-272-4300 – PCT Help Desk

    71. 71 VIII. Further Information USPTO Useful Web Links http://www.uspto.gov Helpful Web Pages: Notices, Recent Patent-Related – a very current list of all Federal Register, Official Gazette and pre-Official Gazette notices, and certain Office memoranda: http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html Forms Page – current USPTO forms available for use by the Public: http://www.uspto.gov/web/forms/index.html Manual of Patent Examining Procedure (MPEP): http://www.uspto.gov/web/offices/pac/mpep/mpep.htm

    72. 72 VIII. Further Information USPTO Useful Web Links (cont’d) Mailing Addresses and Mail Stops: http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm Facsimile Numbers: http://www.uspto.gov/web/offices/com/sol/og/2005/week28/patfaxs.htm USPTO Glossary: http://www.uspto.gov/main/glossary/index.html

    73. 73 Supplement The following slides are included to provide additional information about the AE program.

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    91. 91 Thank You For Further Information Contact: bobspar1@comcast.net (301) 460-1231

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