Getting Started - Other

  • What is a patent?

    A patent for an invention is a grant of property rights by the U.S. Government through the U.S. Patent and Trademark Office. The patent grant excludes others from making, using, or selling the invention in the United States. A utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant. The right conferred by the patent grant extends throughout the United States. The terms "Patent Pending" and "Patent Applied For" are used to inform the public that an application for a patent has been filed. Patent protection does not start until the actual grant of a patent. Marking of an article as patented, when it is not, is illegal and subject to penalty.

    A patent cannot be obtained on a mere idea or suggestion. Patent applications are examined for both technical and legal merit. Prior to filing a patent application, a search of existing patents can be conducted at the USPTO Patent Search Room or at a Patent and Trademark Depository Library in your area. For additional information on patents, you may visit the USPTO Web site at www.uspto.gov/main/patents.htm.

  • What is a patent?

    A patent is a property right granted by the Government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted.

  • I filed a provisional application and did not receive a foreign filing license. Six months have passed and having received no secrecy order, I foreign filed the application. I later filed the nonprovisional application and again did not receive a foreign filing license. Why didn't my implied provisional license apply to my nonprovisional application? Is there an issue with my foreign filing in light of this most recent failure to receive a license?

    The USPTO does not compare the contents of a provisional application with a later-filed nonprovisional application for security review purposes. If applicant obtains a new license on a later-filed application, applicant needs to make a determination of which license controls. That is, if the subject matter of the nonprovisional application does not change the general nature of the invention of the provisional application such that it would have been made available to a defense agency, then the license date of the provisional application would control. In the instance described above, the latter license would control if the documents were not identical because an implied license is under the provisions of 37 CFR 5.15(b). 37 CFR 5.15(b) does not allow for additional subject matter beyond what was originally submitted.

  • How do I apply for a patent?

    Inventors may apply for one of two types of patent applications: (1) A non-provisional application, which begins the examination process and may lead to a patent and (2) A provisional application, which establishes a filing date but does not begin the examination process. Both types of patent applications can be filed either electronically by using the Electronic Filing System (EFS) http://www.uspto.gov/ebc/efs/index.html (for provisional applications, effective January 1, 2002) or in writing to the Commissioner for Patents. You can also request that the U.S. Patent and Trademark Office (USPTO) send informational materials providing a broad overview of the process of obtaining a United States patent, including general requirements and a listing of the depository libraries. For a listing of the information available, visit the USPTO Web site athttp://www.uspto.gov/web/offices/ac/ido/oeip/catalog/products/pp-a2n-1.htm.

  • What is a patent?

    A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. For more information, click here.

  • Can applicant file a paper on an application under secrecy order if the paper does not disclose the subject invention, such as a change of correspondence address?

    No, applicant must file all papers directly with Licensing and Review in accordance with the terms of the secrecy order.

  • Can a petition for an expedited license be filed via EFS-Web?

    If applicant has a patent application on file, the request for an expedited license may be filed as a follow-on paper to that application. An expedited request for a license where there is no pending application on file cannot be filed thru EFS-Web at this time.

  • Do I have to come to Alexandria, Virginia to do a patent search?

    The U.S. Patent and Trademark Office (USPTO) Patent and Trademark Depository Library Program (PTDLP) administers a nationwide network of public, state and academic libraries designated as Patent and Trademark Depository Libraries (PTDLs).

    PTDLs are located in 48 states, the District of Columbia and Puerto Rico where collections of patents may be examined. PTDLs are open to the public and provide access to automated search systems to assist with your search. Call the library before visiting to determine hours of operation, services, and fees. For additional information on the nearest PTDL, visit the PTDL web site at www.uspto.gov/go/ptdl. You may perform preliminary searches of patent information on the USPTO web site at www.uspto.gov/go/pats

  • Who can apply for a patent?

    A patent may be applied for only in the name(s) of the actual inventor(s).

  • I filed a petition for an expedited license under 37 CFR 5.13 for material not disclosed in any U.S. patent application and received the license. The document I filed was assigned a "P" control number. I subsequently filed a U.S. patent application disclosing the same material and received a new license. Why wasn't my expedited license applied to my later-filed U.S. application?

    Petitions for expedited license filed without a corresponding U.S. application are assigned control numbers - the letter "P" followed by a 5 digit number. These petitions are processed and then stored. When the applicant files a subsequent U.S. patent application, the L&R security screener has no way of determining whether or not a previous petition was filed or whether or not the subject matter is identical. At this time, all petitions for license are treated separately and distinct from any other previous or subsequent petition.

  • What is the role of Licensing and Review?

    The role of Licensing and Review (L&R) is to administer the Patent Secrecy Act as defined by 35 U.S.C. 181-186 and 37 CFR part 5. The primary function of this Act is to prevent publication of an application as a patent or a patent application publication where such disclosure would be detrimental to U.S. national security. Additionally, the Act provides for the licensing of applications for export for the purposes of filing for patents abroad.

    The duties of L&R include:

    • Reviewing all applications for patent (provisional, utility, design, PCT (where the U.S. is the receiving office)) to determine whether a foreign filing license may be granted;
    • Managing all existing secrecy orders pursuant to 35 U.S.C. 181 and 37 CFR part 5;
    • Treating all petitions for expedited foreign filing licenses pursuant to 37 CFR 5.12-5.14; and
    • Policing the property rights of the National Aeronautics and Space Administration (NASA) and the Department of Energy (DOE) by administering a portion of the NASA Act as provided for in 42 U.S.C. 2457, and a portion of the Atomic Energy Act as provided for in 42 U.S.C. 2181-2182.
  • Will Licensing and Review assist me in determining whether or not a license is required in my specific instance?

    It is not the role of Licensing and Review to determine the need for a license. Rather, the need for a license is a legal decision that lies with the applicant.

  • Must an application for an invention made at least partially in the U.S. be filed in the U.S. prior to filing abroad?

    No, 35 U.S.C. 184 merely requires applicant to obtain a license from the USPTO prior to filing in a foreign country. This may be done in accordance with 37 CFR 5.13.

  • How do I conduct a patent assignment search?

    A patent is intellectual property that may be sold or bequeathed to heirs of a deceased patentee or patent owner. The patent law provides for the transfer or sale of a patent or patent application by means of a legal document called an assignment. A properly executed assignment transfers all rights from the existing owner to another person. When the patent is transferred, the assignee becomes the new owner of the patent and has the same rights as the original owner.

    The U.S. Patent and Trademark Office (USPTO) records all assignment documents and any document that affects title. Documents that affect title are, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions. For information on filing a patent assignment or documents affecting title, please call the Assignment Division between 8:30 a.m.and 5 p.m. Eastern Time on normal business days at (571) 272-3350.

    The USPTO Public Search Facility maintains assignment ownership records. The Public Search Facility, located on the first floor of the Madison East building at 600 Dulany St. , Alexandria , VA 22313 , is open to the public from 8:00 a.m. to 8 p.m. , Monday through Friday, except Federal holidays. Assignment information is also available at the Patent and Trademark Depository Libraries throughout the United States.

    For additional patent assignment information, you may visit the USPTO web site atwww.uspto.gov/web/offices/ac/ido/opr/index.html .

    >> see also Search Patent Assignments

  • What can and cannot be patented?

    What can be patented - utility patents are provided for a new, nonobvious and useful:

    • Process
    • Machine
    • Article of manufacture
    • Composition of matter
    • Improvement of any of the above

    Note: In addition to utility patents, encompassing one of the categories above, patent protection is available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties by design and plant patents.

    What cannot be patented:

    • Laws of nature
    • Physical phenomena
    • Abstract ideas
    • Literary, dramatic, musical, and artistic works (these can be Copyright protected). Go to the Copyright Office .
    • Inventions which are:
      • Not useful (such as perpetual motion machines); or
      • Offensive to public morality

    Invention must also be:

    • Novel
    • Nonobvious
    • Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
    • Claimed by the inventor in clear and definite terms
  • If a petition for expedited license is filed without a corresponding U.S. application, how much information should be submitted in the copy of the material required by 37 CFR 5.13? Will an invention summary suffice?

    L&R will process what it receives. Applicants must be aware of the license scope that will be afforded by the license, if granted. See 37 CFR 5.15(a) and (b). It is strongly suggested that applicant submit a document that is as closely related as possible to what will be included in the foreign filing. Also, submissions must be in the English language.

  • What are the various options for filing a petition for expedited foreign filing license?

    A petition for an expedited foreign filing license based on a pending patent application (37 CFR 5.14), or for material not related to any pending application (37 CFR 5.13), may be mailed, faxed, hand-delivered or filed thru EFS-Web (provided an application is on file).
    Facsimiles must be sent to: 571 273-0185

    Hand delivery: Room 4B31, 501 Dulany Street (Knox Building), Alexandria Virginia 22314.

    Regular mail: Mail Stop: L&R
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450

    All licenses will be mailed to the appropriate correspondence address, however, a courtesy copy may be provided by facsimile if such notification is requested.

  • I noticed that my application has been "REFERRED BY L&R FOR THIRD-LEVEL SECURITY REVIEW". What does that mean?

    35 USC 181 requires the USPTO to refer any application which it deems the publication of which may be detrimental to national security to an appropriate defense agency for review. If that defense agency makes a positive determination that publication (or export in the form of or which may take the form of a patent application) would be detrimental to national security, that agency would recommend that the application be subject to a secrecy order. If a secrecy order is issued on an application, separate letters to each inventor and the attorney or agent of record will be mailed notifying them of such.

  • Does a foreign filing license from the USPTO apply to any country?

    Yes, a license for the USPTO is not country specific. However, applicant must also abide by the various regulations and restrictions related to sending information to certain countries. For more information, please contact the Bureau of Foreign Assets at the Department of Treasury, the Bureau of Industry and Security at the Department of Commerce, or both.

  • How do I obtain a complete file history of a patent?

    A file history of a patent or a published application for patent may also be obtained in person through the File Information Unit (FIU). The FIU is on the third floor of the Randolph Square Building, 2800 S. Randolph St., Arlington, Virginia. You may contact the FIU through their direct line at 703-756-1100.

  • How do I know if my invention is patentable?

    First, review the list of what can and cannot be patented and determine if your invention falls into one of those categories.

    Second, learn the basics of the patenting process from the materials provided by the USPTO at 800-PTO-9199 or 703-308-HELP or under "General Information." .

    Next, a search of all previous public disclosures (prior art) including, but not limited to previously patented inventions in the U.S. (prior art) should be conducted to determine if your invention has been publicly disclosed and thus is not patentable. A search of foreign patents and printed publications should also be conducted. While a search of the prior art before the filing of an application is not required, it is advisable to do so. A registered attorney or agent is often a useful resource for performance of a patentability search. After an application is filed, the USPTO will conduct a search as part of the official examination process. Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill. The best advice for the novice is to contact the nearest Patent and Trademark Resource Center (PTRC) and seek out search experts to help in setting up a search strategy. If you are in the Washington, D.C. area, the USPTO provides public access to collections of patents, trademarks, and other documents at its Search Facilities located in Alexandria, Virginia. These facilities are open weekdays (except holidays) from 8:00 a.m. to 8:00 p.m.

    Disclaimer
    We have provided links to the site below because it has information that may be of interest to our users. The USPTO does not necessarily endorse the views expressed or the facts presented on this site. Further, the USPTO does not endorse any commercial products that may be advertised or available on this site.

    It is possible, however difficult, for you to conduct your own search. For an introduction to patent searching for the novice please refer to the Patent and Trademark Depository at the Richard W. McKinney Engineering Library, the University of Texas at Austin . Although some of the instructions given here may be unique to the Austin library and the focus of this introduction is on the Cassis CD-ROM products, the fundamentals of patent searching remain the same for any location.

    You should not assume that your invention has not been patented even if you find no evidence of it being publicly disclosed. It's important to remember that a thorough examination at the USPTO may uncover U.S. and foreign patents as well as non-patent literature.

  • When I receive a license, what does it cover?

    See 37 CFR 5.15(a) and 5.15(b) for the various license scopes. Applicant is reminded that a license only covers a filing in a foreign country and activities related to such filing. A license from the USPTO does not cover sending information abroad for the preparation of a filing in the U.S.

  • How quickly can Licensing and Review process a petition for expedited license?

    Licensing and Review (L&R) strives to process petitions for expedited license within three business days of receipt and all petitions are treated in the order in which they are received. In limited instances, licenses may be processed quicker upon a showing that a bar date is imminent. It is suggested that after filing the petition, applicant alert L&R to the need for special handling.

  • How long should the THIRD-LEVEL SECURITY REVIEW take?

    Although publication of the application will not occur until this determination has been completed, 35 USC 184 grants an implicit foreign filing license at 6 months from the filing of the application in the U.S. Therefore, the defense agencies strive to complete this processing within 6 months. However, given the large number of cases forwarded to them, this process often takes longer. Applicant wishing to make inquiries on the timeliness of this process should send an email to DTSAPATENTREVIEW@MAIL.MIL. The USPTO has very limited authority to terminate any security review.

  • Does a foreign filing license from the USPTO permit an applicant to send information abroad for the preparation of a patent application to be filed first in the US?

    No. The delegation of authority to the USPTO from the Bureau of Industry and Security (BIS) does not provide for this. Applicants are directed to BIS for licensing requests of this type. They may be reached at 202-482-4811.

  • How do I check on the status of my pending patent application?

    The U.S. Patent and Trademark Office (USPTO) is pleased to present PAIR - Patent Application Information Retrieval System. PAIR has a private site that provides a USPTO/Internet infrastructure capability to securely provide patent application status information to USPTO customers with a customer number associated with the correspondence address for their application and the appropriate software tools. Contact the Patent Electronic Business Center (PEBC) at (571) 272-4100 to learn more about the tools necessary to access private PAIR.

    PAIR also has a public side to provide the same information to the public once an application has issued as a patent or published as a patent application publication. Once you receive a patent filing receipt containing the application number of your application, you may check on the status of a pending application once you obtain the appropriate tools.

    To find out information on PAIR, visit the PEBC website at: http://www.uspto.gov/ebc/newusers.html. You may also call the examiner assigned to your patent application, and if this information is not known, you may call the File Information Unit at (703) 308-2733. For additional information, you may contact the USPTO Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

  • How much does it cost to get a patent?

    Fees vary depending on the type of patent application you submit. Fees may also vary according to the way you "claim" your invention. More information on filing fees and the number and type of claims.

    There are three basic fees for utility patents:

    • The filing fee, which is non-refundable whether or not a patent is granted. (This is the cost to have your invention "examined" by the US Patent and Trademark Office - remember, you may or may not get a patent!)
    • The issue fee (you pay this only if your application is allowed)
    • Maintenance fees (paid at 3 1/2, 7 1/2, and 11 1/2 years after your patent is granted - these fees "maintain" your legal protection).
    • Additional fees may be required.

    You are strongly advised to check the current fee schedule before submitting your application.

  • Can applicant file papers on an application under secrecy order via EFS-Web?

    No, applicant must file papers directly with Licensing and Review in accordance with the terms of the secrecy order.

  • Does an applicant have to file a petition for a license with a new patent application to obtain a foreign filing license?
    • If an expedited decision is not needed, the mere filing of a provisional, design, utility or PCT (in the US receiving office) is considered a petition for a foreign filing license. See 37 CFR 5.12(a).
    • If expedited processing is required, then a separate petition must be submitted to L&R pursuant to 37 CFR 5.12(b).

Ombudsman Program - General

  • I prefer to submit my inquiry to the Ombudsman in writing; may I do that?

    The Pilot Program is designed so that the Ombudsman obtains information from you regarding your inquiry by phone and then refers your inquiry to the person most appropriate to helping you with the inquiry, particularly when the inquiry goes to the merits of the case. While you can submit your inquiry in writing, please be aware that any written communication received by the Ombudsman regarding the merits of an application will be placed in the application file.

  • How is this Pilot Program different from other customer service sites (e.g., Pubs, PCT, petitions, etc.)?

    The Ombudsman Pilot Program is designed to provide application-specific prosecution assistance when the normal channels have not provided the assistance you need. The table shows our other Customer Services avenues and the assistance each can provide.

  • I submitted an accelerated examination petition; why has it not been worked on yet?

    Generally, a decision on the accelerated examination petition will be issued approximately 2 months from the filing date. An applicant is encouraged to call the USPTO to check on the status if the applicant has not received a communication regarding the accelerated examination petition within 3 months from filing.

  • Why am I getting a phone call from someone and then being forwarded to someone else? Why do I not just get a call from the person who can help me?

    We are committed to calling you within one business day from the day we receive your initial contact with the Ombudsman Pilot Program. In many cases, the person who calls you will be able to resolve your issue or let you know that your issue will be forwarded for resolution without an additional phone call to you. However, if the application is not in the TC that corresponds to the TC Ombudsman that you selected when you sent in your contact information, you will be called to let you know where your contact information will be sent. Once your information is sent to the correct TC, that TC Ombudsman will contact you to ensure they have a clear understanding of your issue.

  • What time frame does accelerated examination typically take to process?

    Once a petition for accelerated examination has been granted to an application, the goal of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application, resulting in a final disposition. In any event, this twelve-month timeframe is simply a goal. Any failure to meet the twelve-month goal, or any other issues relating to this twelve-month goal, are neither petitionable nor appealable matters. The final disposition of an application, however, may occur later than the twelve-month timeframe in certain situations. See MPEP §708.02(a) (providing information on events that may cause examination to extend beyond this twelve-month time frame).

    To access the Accelerated Examination Web page, please click on the link below.
    http://www.uspto.gov/web/patents/accelerated/ae_faq_091207.pdf

  • Why am I unable to include the details of my problem in the initial message?

    The limited interface of the Ombudsman Pilot Program is designed to streamline internal processing and to ensure that merits-based communications are handled within the written record and by the USPTO personnel that are responsible for the prosecution of the application.

    The information that the USPTO will accept through this interface has been limited to prevent non-public information from being submitted to ensure compliance with the confidentiality requirement of applicable statutes and regulations. Furthermore, the follow-up contact by the USPTO is by telephone because the Internet Communication Policy as set out in MPEP 502.03 requires prior written authorization from applicant in order to allow the USPTO to respond to a communication via e-mail. This authorization cannot be done by e-mail or Internet. For purposes of efficiency and uniform application and processing the USPTO will not use e-mail to respond to any of these communications.

    Additionally, all communication received that address the merits of an application must be made part of the record for the application. Thus, if the information supplied by an applicant addresses specifics of the application, the USPTO is required to print a copy and scan it into the Image File Wrapper of the patent application. MPEP 713 states that electronic mail between an examiner and an applicant, attorney, or agent "presenting matters for the examiner's consideration is considered an interview". This provision requires that an Interview summary be made part of the record for the application by the USPTO official handling the correspondence and for the applicant to submit a summary of the interview as well.

    However, the Pilot Program is not designed to deal directly with the merits of an application. The Pilot Program is designed to respond to inquiries with respect to progression of the prosecution relating to the examination of a patent application (or group of applications) and, where necessary, to refer the issue to the appropriate Official to resolve and handle the matter.

    The Pilot Program is designed to facilitate resolutions and advance prosecution and is not intended to circumvent the requirement that all business be transacted in writing, nor is it meant to substitute for filing a required petition (e.g., Office action not received) or to avoid filing a reply to an outstanding Office requirement.

  • When should I use the Ombudsman Pilot Program?

    When you have a question about a specific application in prosecution and have been unable to find the correct person to assist you or have been unable to obtain assistance from the examiner or SPE to whom the application is assigned, then the Ombudsman Pilot Program is the venue to use. If your question is a general question and not associated with a particular pending patent application, then the Ombudsman Pilot Program is not the appropriate program to use. The Ombudsman Pilot Program is not meant to be a universal assistance center but rather a place to get prosecution assistance when you have exhausted normal channels in the Technology Center (TC).

Ombudsman Program - Basics

  • May applicants and attorneys use the Ombudsman Pilot Program?

    Yes; however, if an applicant is represented by an attorney then the applicant cannot separately contact the Ombudsman as this Pilot Program is not meant to override current practice. Dual correspondence with an applicant and applicant's attorney or agent will not be undertaken. See 37 CFR 1.33.

  • Will the Ombudsman keep my complaints confidential?

    During the initial phone call from the Ombudsman, the Ombudsman will ask if you prefer to speak confidentially with him/her. If you do request confidentiality, the Ombudsman will log your complaint into the database and will take no further action on that particular complaint at that time. The database has limited access so your confidentiality will be safeguarded. The Ombudsman Program Director will periodically review reports of the confidential complaints looking for trends or groups of complaints regarding the same or similar issues and will take action based on the trend or group of complaints without revealing the particulars of any individual complaints.

    If you do want your specific issue resolved, it will be necessary to reveal information to the supervisory chain handling your application. Be assured, however, that only as much information as needed to understand the issue will be recorded in the database or revealed to the supervisory chain.

  • Is the Ombudsman simply a liaison between the examiner and attorney? Is this Pilot Program to be used, for example, when an examiner and attorney can not agree on moving a case forward or there is a communication barrier?

    Our normal channels of assistance are usually the most efficient channels for you to get the assistance you require with your applications; however, when those channels have not provided you assistance or you do not know which channel to use, the Ombudsman Pilot Program is here to help. The Ombudsman can help facilitate when there is a breakdown in the normal process, (e.g., when a communication barrier between the applicant/attorney/agency and the examiner or when there is prolonged prosecution).

    The Ombudsman is not meant to be a universal assistance center but rather a place to get assistance when our most efficient, normal processes have not provided what is needed.

  • Is the Ombudsman Pilot Program free of charge?

    Yes

  • Why should I contact the examiner and the SPE first?

    The Ombudsman Pilot Program is not intended to replace the already existing pathways for you to be assisted with your application (i.e., by contacting the examiner and SPE with your patent application questions first). This Pilot Program is for those who have already used those pathways and been unable to get the assistance they need.

Application Processes - Popular Patent Application (EBC) Customer Questions - Ombudsman Program - General

Application Processes - Popular Patent Application (EBC) Customer Questions - Ombudsman Program - Basics

Peer review prior art pilot - Other

  • Should foreign references be accompanied with full English translation?

    All submission must include any necessary English translations.

  • What happens after the submission of the prior art to the USPTO?

    Examiners will consider all documents and comments contained in the peer review process submission and will give those documents and comments the weight the examiner deems appropriate. The examination process for these applications will be performed in a normal manner following established methods.

    However, participating applications will be advanced out of turn for examination for the initial examination on the merits so the results of the pilot can be reviewed in a short time frame.

  • Will my application be advanced out of turn?

    Participating applications that complete the peer review process with at least one prior art reference document will be advanced out of turn for the initial examination on the merits so the results of the pilot can be reviewed in a short period of time.

  • Do I have to send the USPTO an email notification of the filing of the consent?

    No, you do not have to send the USPTO an email notification of the filing of the consent.

  • What effect/impact will the pilot program have on applications/applicants that chose not to participate in the pilot program?

    The Office expects no impact and/or effect regarding applications that do not participate in the pilot. Current Office procedures regarding submissions and public protests remain in place.

  • How long after Pre-Grant Publication does the Peer-to-Patent website have to file a submission?

    The submission must be received by the USPTO from the Peer-to-Patent website within 18 weeks from the date of the Pre-Grant publication date of the application.

  • How do I opt out - exit from the pilot program after I join in (both before and after prosecution begins)?

    Once the Application has been published as part of this program on the Peer-to-Patent web site it continues to be open/available for comments for peer reviewers.

    Applicants may expressly abandon their application; however, the application may continue to received comments from the public due to its publication on the Peer-to-Patent website as the website is not managed by USPTO.

  • How are reviewers/members of the public chosen to participate in the pilot program (requirements, pre-requisites, etc.)?

    Any member of the public that is not a USPTO employee may participate in the pilot including the submission of commentary. The New York Law School's Institute for Information Law and Policy will manage the public aspects of the pilot and run the Peer-to-Patent website located at http://www.peertopatent.org . More information on this initiative can be found at http://dotank.nyls.edu/2011/02/08/peer-to-patent/ [These links to non-Federal Government Web sites do not imply endorsement of this particular organization or the content on these sites.]

  • Does the Peer-to-Patent organization or Applicant file the submission with the USPTO?

    The third-party submissions (the up to 10 pieces of prior art and comments) will be forwarded by Peer-to-Patent to the USPTO.

  • Does the submission have to be served upon applicant as in a Rule 1.99 submission?

    No, for purposes of this pilot the USPTO has waived the serving upon the applicant.

  • I want to participate in the pilot. How do I file a request for early Pre-Grant Publication for an application previously filed or filed during the pilot period?

    Application Previously Filed and Expected to Publish During Pilot.

    Applications previously filed and having an expected date of Pre-Grant Publication during the pilot period are eligible for participation. For example, an application previously filed during the month of December 2005, and filed with no benefit claim under 35 U.S.C. 120 has a projected Pre-Grant Publication date sometime during the month of June 2007. In this situation, Applicant may volunteer for inclusion in the pilot. Provided the application is assigned to TC 2100 or Business Methods, Class 705 and was not filed under Accelerated Examination, and provided the Peer-to-Patent website has sufficient capacity for posting and evaluation of the application, the Office would accept the application for participation in the pilot.

    Application Requires Request for Early Pre-Grant Publication so as to Publish During Pilot.

    Applications either previously filed or filed during the pilot period which do not have a projected Pre-Grant Publication date during the pilot may become eligible for participation provided Applicant files a Request for Early Pre-Grant Publication (or voluntary Pre-Grant Publication, if the application was filed prior to 11/29/2000) so as to induce Pre-Grant Publication during the pilot period. For example, Applicant might file an application during the month of July 2007, along with the filing of a Request for Early Pre-Grant Publication. This application would have a projected date of Pre-Grant Publication sometime during the month of November 2007. In this situation, Applicant may volunteer for inclusion in the pilot. Provided the application is assigned to TC 2100 or Business Methods, Class 705 and was not filed under Accelerated Examination, and provided the Peer-to-Patent website has sufficient capacity for posting and evaluation of the application, the Office would accept the application for participation in the pilot.

    Instructions on How to File a Request for Early Pre-Grant Publication For Peer Reviewed Prior Art Pilot

    Applicant may request early Pre-Grant Publication of an application with a letter requesting early Pre-Grant Publication (e.g., there is a no form for an early Pre-Grant Publication request). The request must include the Pre-Grant Publication fee set forth in 37 CFR 1.18(d) (currently $300). Note that if early Pre-Grant Publication is requested, and the Pre-Grant Publication fee paid, applicant will not be required to pay the Pre-Grant Publication fee at allowance. No consideration will be given to requests for Pre-Grant Publication on a certain date. Such requests will be treated as a request for Pre-Grant Publication as soon as possible. The Pre-Grant Publication cycle takes approximately 14 - 16 weeks and does not begin until the application is complete and ready for Pre-Grant Publication (e.g., an executed declaration has been filed and the filing fee has been paid).

    The request for pre-grant publication of an application for the Peer Reviewed Prior Art Pilot must be addressed to:
    Mail Stop PGPUB
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450

    All other submissions pertaining to Peer Reviewed Prior Art Pilot must be addressed to:
    Mail Stop Peer Pilot
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450

    Application Previously Published.

    An application previously published is ineligible for the pilot unless the application was published within one month of the start of the pilot program, because the Office must receive the submission by the Peer to Patent coordinators within eighteen (18) weeks of the application's date of Pre-Grant Publication.

  • What if an application is accepted in the program and a submission comes in from someone other than the Peer-to-Patent organization?

    Any submission from someone other than the Peer-to-Patent organization does not meet the compliance requirements of the pilot, so the submission will be treated under the provisions of either 37 CFR § 1.99 or 37 CFR § 1.291; such a submission will not be included in the pilot.

Certificate of Correction - Other

  • My issue notification is incorrect (e.g., an inventor's name, address, title of invention), what should I do

    The issue notification is not used for printing. Therefore, errors in your issue notification do not necessarily mean that the data will be incorrectly printed in your printed patent. Such data, as mentioned above, should have been filed during the pendency of your patent and correctly noted on your Declaration, the first page of the specification, and bibliographical page/sheet, which is used for verification and printing of the patent. Since your printed patent will be mailed shortly after the issue notification, you should check your printed patent before inquiring as to issuance of a Certificate of Correction.

  • What should I do if I disagree or have a question in regards to the notification letter (or denial letter) that I received from the Certificates of Correction Branch

    Submit signed and dated transmittal letter (cover letter), identify the patent you are referring to, state all the discrepancies you have concerning the response you received, and fax it to Supervisor of Certificates of Correction Branch at 571.270.9882.

  • How can I get erroneous assignee information appearing on my printed patent corrected? 

    You must file a request for a Certificate of Correction. If the correct data is indicated on the Issue Fee Transmittal (PTOL-85b), a Certificate of Correction will be issued. This would be considered an Office error and does not require a fee or petition.

    If this is an applicant's error, that is the correct assignee's name and/or address is not indicated on the PTOL-85B, a Petition under 1.183 is required.

    How to file a Petition under 1.183:

    • Direct Petitions to correct assignees' names and/or address to the Office of Petitions, Box DAC. Include your request for Certificate of Correction to correct applicant's error
    • Include petition fee (and Certificate of Correction fee, if not previously submitted)
    • Clearly indicate correct name and address of the assignee(s)
    • Provide the reel and frame number where the assignment(s) is recorded or proof of date the assignment was submitted for recordation.
  • Who should I speak to about requesting a Certificate of Correction form?

    The Certificates of Correction form (PTO/SB/44, same as PTO-1050) may be obtained by contacting the General Services Division at 1.800.786.9199 (1.800.PTO.9199) or 571.272.1000.
    Also, the forms are available on the USPTO Internet site at:
    http://www.uspto.gov/web/forms/index.html.

  • I filed a Certificate of Correction, but my correspondence address and/or Power of Attorney has changed since the request. What should I do?

    Send your change of correspondence address and/or power of attorney to:

    Mail Stop Post Issue
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450

    In addition, a copy of the request (marked copy) should be sent to the Certificates of Correction Branch at:

    Commissioner for Patents
    Office of Data Management
    Attn: Certificates of Correction Branch
    P.O. Box 1450
    Alexandria, VA 22313-1450

    This will ensure the proper mailing of any correspondence being directed to you regarding your Certificate of Correction.

  • A Certificate of Correction issued to correct an error in my patent. However, the correction has not been made to the patent appearing on the USPTO Web site. Who should I contact to correct an error appearing in a patent on the USPTO Website?

    A correction made by way of a Certificate of Correction appears as an attachment to the patent. At this time, no changes are made to the incorrect patent as originally displayed on the USPTO Web page.

  • I have a trademark, how do I file a Certificate of Correction?

    Call 571.272.5400 for corrections to trademarks. The Certificates of Correction Branch is responsible for making corrections to only printed patents.

  • What do I need to file to request an error appearing in printed patent be corrected?

    You should file a request for a Certificate of Correction that contains the following:

    1. A transmittal letter or cover letter that includes bibliographic data identifying the:
      • patent number
      • application number
      • inventor(s)
      • issue date
      • title of invention

      NOTE: The transmittal letter should be signed by the attorney of record or owner of record and should state any facts supporting the requested corrections.

    2. A copy of any document supporting the requested correction(s), your search revealed, that are not in the Office record or file (e.g., post card receipts, amendment(s), 1449)
    3. Form PTO/SB/44 (same as form PTO-1050)
    4. Identification of the location of error(s). Identify them by column and line number, using the nearest marginal line number in the printed patent.

    Leave 2 inches at the bottom of the last page or first page if only one page.

    No fee is required to correct errors made by the Office; however, if it is an applicant's error the required fee for consideration is $100.

    All requests are to be mailed to:

    Commissioner for Patents
    Office of Data Management Attention: Certificates of Correction Branch
    P.O. Box 1450
    Alexandria, VA 22313-1450

    For more information, contact the Certificates of Correction Branch by e-mail: CustomerServiceCoC@uspto.gov or by telephone: 703.756.1814.

  • How do I get my request for a Certificate of Correction expedited?

    You must submit your request in writing justifying why the expedited service is needed. Please include your justification with your request for a Certification of Correction, and mail to:

    Commissioner for Patents
    Office of Data Management
    Attention: Certificates of Correction Branch
    P.O. Box 1450
    Alexandria, VA 22313-1450

  • Who do I contact regarding the status of my request for a Certificate of Correction?

    The first inquiry should be directed to the Certificates of Correction Branch via e-mail, mail or telephone.

    E mail: CustomerServiceCoC@uspto.gov

    Mailing address:

    Commissioner for Patents
    Office of Data Management
    Attention: Certificates of Correction Branch
    P.O. Box 1450
    Alexandria, VA 22313-1450

    Telephone: 703.756.1814

    Second inquires should also be directed to the Certificates of Correction Branch using the above-referenced e-mail, mailing address and telephone number. However, the second inquiry by mail or telephone should be directed to the Team Leader and/or Supervisor of the employee processing your request.

eOffice Action - Other

  • Which business units in the USPTO do not participate in the e-Office Action program?

    Since several areas of the Office have independent mailing processes, participants will continue to receive paper mailings for communications prepared by certain business units including (but not limited to): the PCT Operations Division – International Branch, BPAI for interference proceedings, Central Reexamination Unit (CRU), Office of Enrollment and Discipline, and Office of the Solicitor.

  • When can I expect the first e-mail notification after I elect to participate in the e-Office Action program?

    The first e-mail notification of Office communication will be generally delivered no earlier than two business days after switching to e-Office Action program. However, this is dependent on the volume of Office communication you receive for applications associated to the Customer Number.

  • What is e-Office Action?

    The e-Office Action program is a new USPTO initiative available through Private PAIR. The e-Office Action program is designed to notify applicants, via e-mail, that new Office communication is available for viewing and downloading in Private PAIR. Applicants who opt-in to the program will receive a daily e-mail notification that will replace the daily POSTAL MAILED PAPER DELIVERY of Office communication.

    Please Note: The e-Office Action program is based on applications associated to a Customer Number. Applicants with multiple Customer Numbers must opt-in each Customer Number to receive separate e-mail notifications.

  • If I am participating in the initial Pilot Program for e-Office Action, will I need to sign up again when the program is made available to everyone?

    The pilot-to-production transition will be transparent to you. You will automatically be part of the e-Office Action program. No action from you is needed. There is no need to opt in again.

  • How do I view the new Office communication once I have been notified?

    There are two methods to access new Office communication in IFW via Private PAIR. The first method is to search by individual application number then select the IFW tab to access the file wrapper. The second method is by Customer Number via the Outgoing Correspondence search.

  • What are the key benefits of participating in the e-Office Action program?
    • Minimizes the risk of delayed or lost Office communication sent by mail
    • e-mail notification expedites the availability of Office communication up to three days faster than communication sent by postal mail
    • Eliminates receipt of paper copies thus reducing paper communication processing errors and docketing time
  • Can I view an e-mail history of e-mail notifications?

    Yes. Specific e-Office Action related events with corresponding date are available in the Transaction History tab in Private PAIR. The Transaction Description events are self explanatory and are labeled as “Email Notification,” “Electronic Review,” and if applicable “Mail Post Card.” In addition, an OA.EMAIL document is placed in the file wrapper of the application notified that day. The OA.EMAIL document is a truncated version of the daily e-mail listing details of only that specific application number’s new communication.

  • Will the Office communication documents be attached to the e-mail notification?

    No. The actual Office communication documents can be accessed via Private PAIR.

  • What types of application are included in the program?

    The program includes provisional applications and non-provisional applications filed under 35 U.S.C. 111, including utility, plant, design, and reissue applications and national stage applications under 35 U.S.C. 371. However, the following applications and proceedings are not included in the program: international applications under 35 U.S.C. 363, reexamination proceedings, and interference proceedings.

  • If I utilize an e-mail spam filter, what configuration setting must be performed to allow the e-mail notification?
    • The USPTO.GOV domain must be listed in the ‘allow’ or ‘white’ list.
    • Additional spam filter configurations are:
    • The subject name of the notification: Private PAIR Correspondence Notification for Customer Number XXXXX, where XXXXX refers to your Customer Number
    • The ‘From’ field of the e-mail is PAIR_eOfficeAction@uspto.gov. Please do not reply to this email address.
  • What happens if I forget to view my Office communication?

    As a courtesy, the USPTO will mail a reminder postcard to the applicant if new communication has not been accessed in Private PAIR within seven calendar days after the sending date of e-mail notification. Please note that the postcard is sent only for communications that require an applicant’s response such as a Final Rejection, Non-Final Rejection or Notice of Allowance and Allowability.

  • Does e-Office Action program change the policy for communication via the Internet?

    By registering for the e-Office Action program, participant is authorizing the Office to send e-mail notifications of Office communications entered by the participating Office business units in the applications associated with the Customer Number. The e-Office Action program does not, otherwise, change the policy for communication via the Internet set forth in the Manual of Patent Examining Procedure (MPEP) § 502.03. The e-mail notification is simply an automated e-mail sent by the Office. It is not an e-mail sent by the examiner. The program does not alter the Office policy prohibiting an applicant or examiner from engaging in improper e-mail correspondence.

  • What should I do if I do not get notified or get notified late via an e-Office Action e-mail notification?

    Please refer to sections 10 and 12 of the OG notice

  • Can I opt out of the program anytime after I elect to participate?

    Yes. Participants in the e-Office Action program can easily opt-out of the program at anytime. From the Details for Customer Number page, participants must select from the menu items: Receive Correspondence via Postal Mail, then review changes, and submit your changes to the USPTO. Please note that switching repeatedly between electronic and paper communication within a calendar day may result in notification delays. Also, opting out of the program will not stop the distribution of courtesy postcards for any unviewed communication for which an e-mail notification was sent. Should you elect to return to paper communication, it is recommended that one e-mail address remain assigned to the Customer Number in order to deliver e-mail notifications still in process.

  • How is e-Office Action different from the current paper delivery of Office communication?

    USPTO currently mails Office actions and all other communications to applicants. Applicants electing to participate in the e-Office Action program will receive daily e-mail notifications at their designated e-mail addresses from the USPTO that Office communication is available for secure viewing and downloading in Private PAIR. Opting into the program means that the USPTO will discontinue mailing participating applicants paper copies of Office communication. Applicants participating in the e-Office Action program will rely solely on e-mail notifications and the Office communication that is electronically available in Private PAIR rather than paper copies of communication send through the mail.

  • How many e-mail addresses can I associate to e-Office Action?

    The e-Office Action program requires at least one e-mail address. Up to a maximum of three valid e-mail addresses can be assigned to receive e-mail notifications. For example, these e-mail addresses may be an individual’s e-mail address, a general mailbox, or a docketing department’s e-mail address.

  • Who may participate?

    Effective on June 29, 2009, any registered attorney or agent of record, and pro se inventor who is a named inventor, in a patent application associated with a Customer Number through which Private PAIR is accessed, may participate in the e-Office Action program. To access Private PAIR, the participant must have a Public Key Infrastructure (PKI) certificate linked to the participant’s Customer Number.

  • How do I gain access to Private PAIR?

    To access Private PAIR you must:

    • be a registered patent attorney/agent, an Independent Inventor, or a person granted limited recognition;
    • have a customer number; and
    • have a digital PKI certificate.

    Instructions on how to apply for a Customer Number and digital PKI certificate can be found on the Patent EBC Web site.

  • How often will I receive e-mail notifications?

    Participants will receive an e-mail notification daily for each Customer Number, including weekends, by 8:00 a.m. Eastern Time. An e-mail notification is sent only when there is new Office communication that day for applications associated with the participant’s Customer Number. Once you are opted in, any Office action currently in process will continue to be mailed in a paper format.

  • What are the key benefits of participating in the e-Office Action program?
    • Minimizes the risk of delayed or lost Office communication sent by mail
    • e-mail notification expedites the availability of Office communication up to three days faster than communication sent by postal mail
    • Eliminates receipt of paper copies thus reducing paper communication processing errors and docketing time
  • Which USPTO business units participate in the e-Office Action program?

    Participants will receive e-mail notifications for any communications prepared by the following participating business units: Technology Centers, the Office of Patent Application Processing (formerly Office of Initial Patent Examination (OIPE)), Office of Data Management (Pre-Grant Publications and Office of Publications), Board of Patent Appeals and Interferences (BPAI) for ex parte appeals of rejections, Office of Petitions, and Office of Licensing & Review.

  • What are the steps I must take to participate in the e-Office Action Program?

    A few steps make it simple and easy to begin participating in the USPTO’s e-Office Action program.

    1. Log-in to Private PAIR and select View Customer Number Details from the menu list. This will take you to the Details for Customer Number screen so you can review current Customer Number details.
    2. Next, select the ‘Request Customer Data Change(s)’ button near the bottom of the web page to enter the Edit Customer Details screen.
    3. In the heading section on the Edit Customer Details screen, select: Receive Correspondence Notification via e-mail.
    4. Finally, enter up to a maximum of three e-mail addresses where the notifications will be sent, preview your changes, then submit your change request to the USPTO.
    5. After completing this process, PAIR will send a test email to each modified or new e-mail address.
  • How do I associate my existing patent applications to my Customer Number?

    You will need to submit a Customer Number Upload Spreadsheet to associate your current patent applications to your Customer Number. Please go to the Patent EBC Web site and follow the instructions within Step 1 under the heading "Associate Existing Patent Applications to a Customer Number".

  • What information is contained in an e-Office Action e-mail notification?

    An e-mail notification provides comprehensive information regarding the new Office communication. The information in the e-mail notification includes application number(s), Image File Wrapper (IFW) Document Code, mail room date, the attorney docket number, as well as your correspondence address and associated Customer Number. Basically, you will know exactly what you are being notified for prior to accessing the actual communication in Private PAIR. (Please refer to the e-Office Action Computer Based Training module for additional details and to view a sample e-mail notification).

  • What are the key benefits of participating in the e-Office Action program?
    • Minimizes the risk of delayed or lost Office communication sent by mail
    • e-mail notification expedites the availability of Office communication up to three days faster than communication sent by postal mail
    • Eliminates receipt of paper copies thus reducing paper communication processing errors and docketing time

Help for Inventors - Other

  • Does the USPTO control the fees charged by patent attorneys and agents for their services?

    A. No. This is a matter between you and your patent attorney or agent in which the Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, and (c) USPTO prosecution.

  • May I write to the USPTO directly about my application after it is filed?

    A. The Office will answer an applicant's inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the Office will not correspond with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.

  • Will the USPTO advise me as to whether a certain patent promotion organization is reliable and trustworthy?

    A. No. The Office has no control over such organizations. The Office will publish complaints regarding invention promoters and replies from the invention promoters. The Office will not undertake any investigation of the invention promoters. Questions or complaints should be directed to the Mail Stop 24; Director of the U.S. Patent and Trademark Office; P.O. Box 1450; Alexandria, VA 22313-1450 or call at 866-767-3848 .

    It is advisable, however, to check on the reputation of invention promotion firms before making any commitments. It is suggested that you obtain this information from the Better Business Bureau of the city in which the organization is located, or from the bureau of commerce and industry or bureau of consumer affairs of the state in which the organization has its place of business. You may also undertake to make sure that you are dealing with reliable people by asking your own patent attorney or agent or by asking others who may know them.

  • Is it necessary to go to the USPTO to transact business concerning patent matters?

    A. No. Most business with the Office is conducted by written correspondence. Interviews regarding pending applications can be arranged with examiners if necessary and are often helpful.

  • Are there any organizations in my area which can tell me how and where I may be able to obtain assistance in developing and marketing my invention?

    A. Yes. In your own or neighboring communities you may inquire of such organizations as chambers of commerce and banks. Many communities have locally financed industrial development organizations, that can help you locate manufacturers and individuals who might be interested in promoting your idea.

  • If two or more persons work together to make an invention, to whom will the patent be granted?

    A. If each had a share in the ideas forming the invention as defined in the claims - even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.

  • Are there any state government agencies that can help me in developing and marketing of my invention?

    A. Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations you can obtain this information by writing to the governor of your state.

  • If a first person furnishes all of the ideas to make an invention and a second person employs the first person or furnishes the money for building and testing the invention, should the patent application be filed by the first and second persons jointly?

    A. No. The application must be signed by the true inventor, and filed in the USPTO, in the inventor's name. This is the person who furnishes the ideas (e.g. the first person in the above fact pattern), not the employer or the person who furnishes the money.

  • Can the USPTO assist me in the developing and marketing of my patent?

    A. No. The Office cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. The Office, however, will publish for a fee, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. In addition, the Office of Independent Inventor Programs (OIIP) was established in March 1999 in order to meet the special needs of independent inventors. The OIIP establishes new mechanisms to better disseminate information about the patent and trademark processes and to foster regular communication between the USPTO and independent inventors.

  • What do the terms "patent pending" and "patent applied for" mean?

    A. They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.

Business Methods - Other

  • Question CBMR3010: What patents are eligible for a covered business method review?

    A covered business method review is available for all patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-inventor provisions in current Title 35, provided that the patent is drawn to a covered business method.  The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.  The AIA does not specify what a patent for a technological invention covers, and therefore, the Office has promulgated a rule for technological invention.

  • Question CBMR8010:  How will the Board handle multiple proceedings for the same patent, such as two or more covered business method reviews on the same patent?

    Where another matter involving the same patent is before the Office during the pendency of the covered business method review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.  Joinder may be requested by a patent owner or petitioner.

  • Question CBMR3040: Is it the subject matter of the patent or the claims themselves that will be evaluated in determining whether a patent is a covered business method patent?

    The definition for a covered business method patent provided in the AIA provides that a covered business method patent is “a patent that claims a method or corresponding apparatus for performing data processing . . . , except that the term does not include patents for technological inventions.”  (Emphasis added.)  The determination of whether a patent is a covered business method patent subject for review therefore will be based on what the patent claims.

  • Question CBMR5020: How long will a covered business method review take?

    A covered business method review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause. 

  • Question CBMR4010: Who may file for a covered business method review?

    Only a person who is sued or charged with infringement of a covered business method patent may petition for a covered business method review of the patent.

  • Question CBMR8020:  Can the parties to a covered business method review settle?

    Like in a post grant review, parties to a covered method patent review are permitted to settle.  A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision. 

  • Question CBMR3050:   Who bears the burden to demonstrate that at least one claim of the challenged patent is to a covered business method patent and not directed to a technological invention?

    The petitioner bears the burden to demonstrate that the challenged patent is a covered business method patent and that at least one claim of the challenged patent is not directed to a technological invention to show that the petitioner has standing to proceed.  The showing for both covered business method patent and technological invention is based on what is claimed.

  • Question CBM5030:  How will the Board conclude a covered business method review?

    Like in a post grant review, where a covered business review is instituted and not dismissed, the Board shall issue a final written decision.  The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the covered business review.

  • Question CBMR5010:  How will covered business method reviews be conducted?

    Generally, the AIA provides that covered business method reviews will employ the standards and procedures of a post grant review, subject to certain exceptions such as the grounds for challenge and the scope of estoppel.

  • Question CBMR8030:  Can a party to a covered business review be sanctioned?

    Yes, the AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of the review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

  • Question CBM4020:  What does charged with infringement mean in the context of a covered business method review?

    Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court. 

  • Question CBMR1010: What is the effective date for the covered business method review provision in the AIA?

    The effective date for the covered business method review provision in the AIA is September 16, 2012.

  • Question CBMR6010:  After the Board renders a final decision in a covered business method review, do any estoppels apply against the petitioner?

    Yes, a petitioner in a covered business method review may not request or maintain a subsequent proceeding before the Office with respect to any claim on any ground raised or reasonably could have been raised in the covered business method review.  By contrast, a petitioner in a covered business method review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised. 

  • Question CBMR3020: What is a patent for a technological invention?

    In determining whether a patent is for a technological invention, the following will be considered on a case-by-case basis:  whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution. 

  • Question CBMR4030:  When can a petitioner bring a covered business method review for a patent?

    A covered business method review may be requested except during the period in which a petition for post-grant review could be filed, e.g., 9 months after the issuance of a patent that is subject to the first inventor-to-file provisions.  The transitional review program is available for non-first-to-file patents, even within the first nine months of the grant of such patents.

  • Question CBMR2010:  How long will covered business method reviews be available?

    The AIA provides that the covered business review provision sunsets after 8 years from the effective date of the provision.  Accordingly, the Office will not accept new petitions for covered business method review filed on or after September 16, 2020.

  • Question CBMR6020:  After the Board renders a final decision in a covered business method review, do any estoppels apply against the patent owner?

    Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was not permitted to do during the proceeding.

  • Question CBMR3030:  How will the Office interpret the term “financial product or service” provided in the covered business method definition?

    In administering the program, the Office will consider the legislative intent and history behind the public law definition and the transitional program itself.  For example, the legislative history explains that the definition of covered business method patent was drafted to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”  157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Senator Schumer).  This remark tends to support the notion that “financial product or service” should be interpreted broadly. 

  • Question CBMR4040:  On what grounds may a petitioner challenge a patent in a covered business method review?

    A petitioner for covered business method review may request to cancel as unpatentable one or more claims of a covered business method patent granted under the first-to-file provisions of the AIA on any ground, but limited prior art shall apply for those challenged covered business method patents granted under the first-to-invent provisions of Title 35.

General - Other

  • If an application is filed with a preliminary amendment to add several new claims, does the preliminary amendment have to include a complete listing of all claims in compliance with revised 37 CFR 1.121?

    Yes, the preliminary amendment must be filed in compliance with revised 37 CFR 1.121 with a complete listing of the claims. The new claims should have the status identifier, "new". Applicant should not use the status identifier, "original" for the claims added in the preliminary amendment, even if the application was filed with an oath or declaration that has a statement referring to the preliminary amendment. If applicant files a subsequent amendment that includes a complete listing of the claims, applicant should use the status identifier, "previously presented" (if the claims added in the preliminary amendment are not being amended), or "currently amended" (if the claims added in the preliminary amendment are being amended). Filing an application with a preliminary amendment is not recommended. Applicants are encouraged to file the application with a specification that includes the desired set of claims. See File Continuation or Divisional Application with a New Specification and Copy of Oath or Declaration from Prior Application, 1251 Off. Gaz. Pat. Office 54 (October 9, 2001).

  • What is the difference between a disclosure document and a provisional application?

    A Disclosure Document is not a patent application, and does not permit the term "Patent Pending" to be applied in connection with the invention. The date of receipt of a Disclosure Document in the USPTO will not become the effective filing date of any patent application subsequently filed. The date of the Disclosure Document's receipt in the USPTO, however, provides evidence of a date of conception if it is referenced in a related patent application within two years of such receipt.

    The Disclosure Document brochure is at http://www.uspto.gov/web/offices/pac/disdo.html.

    Unlike a Disclosure Document, a provisional application is a patent application, which establishes an official United States patent application filing date for the invention and permits the term "Patent Pending" to be applied in connection with the invention. A foreign application may claim priority to a provisional application, but a disclosure document may not be relied upon for priority. A provisional application automatically becomes abandoned when its pendency expires 12 months after the provisional application filing date by operation of law. Applicants must file a non-provisional application claiming benefit of the earlier provisional application filing date in the USPTO before the provisional application pendency period expires in order to preserve any benefit from the provisional-application filing.

    Information on provisional applications is located at http://www.uspto.gov/web/offices/pac/provapp.htm.

    Upon request, the USPTO will send Disclosure Document and Provisional Patent Application brochures including forms. For additional information, you may contact the USPTO Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

  • I filed an after-final amendment in compliance with the previous version of 37 CFR 1.121 with a certificate of mailing date before July 30, 2003 and the amendment was not entered by the Office. I would like to file a request for continued examination (RCE) under 37 CFR 1.114 and have the after-final amendment to be entered as the submission for the RCE. If the RCE is filed on or after July 30, 2003, would the Office accept the after-final amendment as a compliant amendment when the amendment is entered as the submission for the RCE?

    Yes, if the after-final amendment is filed in compliance with the previous version of 37 CFR 1.121 with a certificate of mailing date before July 30, 2003, the Office will enter the amendment as a compliant amendment when the RCE is entered.

  • How can I find out the inventor's name of a particular patent?

    Users can access searchable databases containing full-text patent information for U.S. patents granted since 1976 and full-page images since 1790 on the U.S. Patent and Trademark Office (USPTO) web site atwww.uspto.gov/go/pats.

    A search may also be conducted at a Patent and Trademark Depository Library (PTDL) established throughout the United States. These libraries have copies of patents in multiple formats arranged in numerical order. They also have classification search tools, automated search aids, and photocopy facilities available to the public. For additional information on the nearest PTDL, you may visit our web site at:http://www.uspto.gov/go/ptdl.

    The UPTO Public Search Facility staff will conduct an inventor search and provide a list of patent numbers found. This information may be obtained upon request by submitting the inventor's name and approximate date of patent grant and payment of $40 for one hour or fraction thereof, which usually encompasses a 10 year span.

    For the current schedule of fees, see the USPTO web site at www.uspto.gov/go/fees or you may request that USPTO mail a fee schedule to you. Please note: Fees are subject to change in (usually) October of each year and should therefore be verified before submission to the USPTO. Checks or money orders should be payable to the Commissioner for Patents and sent to:

    U.S. Patent and Trademark Office
    Public Search Facility, Manager
    Madison - East, First Floor
    P.O. Box 1450
    Alexandria, VA 22313-1450

  • If I filed an amendment under the previous version of 37 CFR 1.121 with a certificate of mailing date before July 30, 2003, the effective date of revised 37 CFR 1.121, but the Office received the amendment on or after July 30, 2003, would the amendment be accepted as a compliant amendment under 37 CFR 1.121?

    Yes, if the amendment is filed in compliance with the previous version of 37 CFR 1.121 with a certificate of mailing date before July 30, 2003, the amendment will be accepted as a compliant amendment. See Pre-OG notice, Amendments Permitted under the Revised Amendment Practice and Treatment of Non-Compliant Amendments (signed July 11, 2003) available on the USPTO website.

  • How can I obtain patent application drawing information?

    The Guide for the Preparation of Patent Drawings is currently out of print. This publication, when available, can be ordered from the Superintendent of Documents, U.S. Government Printing Office, Washington, DC 20402, or you may call 202 512-1800. The Guide to Filing A Utility Patent Application also contains information on drawing requirements. This publication is available for your use at a Patent and Trademark Depository Library (PTDL) in your area or on the USPTO website at http://www.uspto.gov/web/patents/pubs/pdg0602.zip. For information on your nearest PTDL, you may visit PTDL Web site at http://www.uspto.gov/go/ptdl. Additionally, the rules for patent drawings are included in title 37 of the Code of Federal Regulations, sections 1.81, 1.83, 1.84 and 1.85, and drawings are also addressed in Section 608.02 of the Manual of Patent Examining Procedure (MPEP)(the MPEP includes a copy of title 37). The MPEP is available on our Web site at http://www.uspto.gov/web/offices/pac/mpep/mpep.htm.

    For additional information, you may contact the USPTO Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

  • May I submit a complete claim listing in a reply when I am not making any changes to the claims, such as responding to a restriction requirement or merely arguing a rejection?

    Yes. Although a complete claim listing is only required whenever changes are made to any claims, one may be submitted in a reply to an Office action where no changes are being made. It is beneficial to the examiner (and all viewers of the electronic file) to have the most up-to-date set of claims in the most recent paper submitted by the applicant. Note that the claim listing in this situation would not include any claims with markings or any claims with the status identifiers of (new) or (currently amended).

  • Can I download patent forms off the Internet or web site?

    Yes. For patent forms information, you may visit the U.S. Patent and Trademark Office Web site at http://www.uspto.gov/go/forms. Presently, only a few forms are fillable on-line.

  • Where can I obtain a USPTO form?

    All USPTO forms are available on our Forms page.

  • I have canceled a claim and renumbered the other claims during the international stage of an international application that was subsequently entered in the national stage. I would like to file an amendment to the claims in the national stage of the international application, what status identifier(s) should I use for the renumbered claims?

    The status identifier, "original", should be used for renumbered claims that have not been amended. The status identifier, ""previously presented"", should be used for renumbered claims that were previously amended but are not being amended in the amendment. The status identifier, "currently amended", should be used for renumbered claims that are being amended in the amendment.

  • How do I obtain a copy of a patent or a patent application publication?

    Copies of patents or patent application publications, shipped via the U.S. Postal Service, may be purchased for $3 each. To order a patent copy, you must provide the patent number. To order a copy of a patent application publication, you must provide the publication number. Checks or money orders should be payable to the Director of Patents and Trademarks. Copies can also be paid for by using VISA®, MasterCard®, American Express®, Discover® credit cards, Electronic Funds Transfer (EFT) or a USPTO deposit account.

    Orders may be placed via the following methods:

    Order copies online

    E-mail to dsd@uspto.gov

    Phone:(571) 272-3150 or (800) 972-6382. Staff is available Monday through Friday from 8:30 AM - 5:00 PM Eastern Time.

    Fax: (571) 273-3250 . Fax service is operational 24 hours daily.

    Mail:

    Mail Stop Document Services
    Director of the U S Patent and Trademark Office
    P.O. Box 1450
    Alexandria, VA 22313-1450.

    For information about expedited delivery services, such as overnight courier, please call (571) 272-3150 between 8:30 AM - 8:00 PM Eastern Time, Monday - Friday.

    For additional patent copy information, you may visit Products and Services and to conduct a patent search you may visit Search Patents.

  • How long does patent protection last?

    For applications filed on or after June 8, 1995, utility and plant patents are granted for a term which begins with the date of the grant and usually ends 20 years from the date you first applied for the patent subject to the payment of appropriate maintenance fees for a utility patent. There are no maintenance fees for plant patents . Design patents last 15 years from the date you are granted the patent. No maintenance fees are required for design patents.

    Note: Patents in force on June 8, 1995 and patents issued thereafter on applications filed prior to June 8, 1995 automatically have a term that is the greater of the twenty year term discussed above or seventeen years from the patent grant.

  • How can I get patent information on submitting a change of correspondence address?

    Where an attorney or agent of record (or applicant, if he or she is prosecuting the application pro se) changes his or her correspondence address, he or she is responsible for promptly notifying the United States Patent and Trademark Office of the new correspondence address (including ZIP code number). The notification should also include his or her telephone number. For additional information on change of correspondence address, you may visit the Patents page and then by clicking on "Customer-requested actions" see MPEP Chapter 601.03. Also, you may visit our web site for patent forms , see Form No. PTO/SB/122 (pending application) and PTO/SB/123 (issued patent).

    In addition, an address represented by a Customer Number [definition] may be designated as the correspondence address of one or more applications (or patents) or the fee address of one or more allowed applications or patents. In addition, a Customer number representing a list of practitioners may be designated as the practitioners covered by a Power of Attorney in one or more applications or patents. A Customer Number associated with a correspondence address of an application or patent is the Customer Number used to obtain access to the Patent Application Information Retrieval (PAIR) system for that application or patent athttp://portal.uspto.gov/external/portal/pair. See MPEP § 1730 for additional information regarding PAIR.

  • Does the U.S. Patent and Trademark Office offer tours?

    Currently, the USPTO does not offer or conduct public tours of its facilities.

    The USPTO Museum and Store are open from 9:00 a.m. to 5:00 p.m., Monday through Friday, and Noon to 5:00 p.m. Saturday. The museum and store are closed on Sundays and federal holidays. School and group tours are welcome at the museum. Please contact the Office of Public Affairs at 571-272-8400 to schedule a tour.

    The museum is located in the Atrium of the Madison Building, 600 Dulany Street, Alexandria, Virginia, and easily accessible from the King Street and Eisenhower Avenue Metro stations.

    Please check our VISITING THE USPTO page to obtain information about local mass transportation systems and to view an area map.

  • Can I use the transmittal letter of a continuation or divisional application to amend the first sentence of the specification to add the benefit claim to the parent application?

    No, a preliminary amendment cannot be made in a transmittal letter or form for the filing of an application. The amendment to the specification that adds the specific reference to the parent application in the first sentence of the specification following the title must be provided on a separate sheet of paper in compliance with revised 37 CFR 1.121. Applicant may wish to provide the specific reference in an application data sheet (ADS) under 37 CFR 1.76 or in a new specification instead of filing a copy of the specification of the parent application with a preliminary amendment. The Office transmittal forms will no longer permit any preliminary amendment to be made in the transmittal form. If applicants are using a transmittal form that provides a box for a preliminary amendment, applicants are advised not to use such box, but to provide the preliminary amendment on a separate sheet of paper in compliance with revised 37 CFR 1.121.

  • I lost my original grant patent, can I get another?

    The U.S. Patent and Trademark Office issues only one original grant copy of a patent to the inventor. However, you may obtain a certified (blue ribbon and seal copy) by contacting the Certification Division at 800 972-6382 or (571) 272-3150.

    On petition, the Office will create a replacement patent grant. Applicant must file a petition under 37 CFR 1.182, with a request for a replacement patent grant and a statement that the original patent grant was lost or stolen. The current petition fee set forth in 37 CFR 1.17(f) (fee code 122) should also be provided. Petitions under 37 CFR 1.182 are treated by the Office of Petitions. The telephone number for the Office of Petitions is (571) 272-3282.

  • When should I receive my patent filing receipt?

    For information regarding the official filing receipt for a patent application, please call Office of Initial Patent Examination, Customer Services between 8:30 a.m. - 5 o'clock p.m. Eastern Time on normal business days. The number is (571) 272-4000.

  • What is the difference between a utility patent and a design patent?

    A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Upon request, the U.S. Patent and Trademark Office (USPTO) will send information on utility and design patent applications including forms for filing applications. To request this information, you may contact the USPTO Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

  • When I file an amendment to the drawings, do I need a Letter to the Office Draftsman?

    No, a Letter to the Office Draftsman is not required. The amendment to the drawings must include: (1) replacement figures which incorporate the desired changes, and (2) an explanation of the changes either in the drawing amendments or remarks section of the amendment.

  • How can I find out if my invention is already patented?

    Public users may perform preliminary searches of patent information in a variety of formats including on-line, microfilm, and print at the United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA.

    State of the art computer workstations provide automated searching of patents issued from 1790 to the current week of issue. Full document text may be searched on U.S. patents issued since 1971 and OCR text from 1920 to 1970. U.S. patent images from 1790 to the present may be retrieved for viewing or printing. Some foreign patent documents are available.

    A complete patent backfile in numeric sequence is available on microfilm or in optical disc format. Official Gazettes, Annual Indexes (of Inventors), the Manual of Classification and its subject matter index, and other search aids are available in various formats.

    Patent assignment records [e Biz] of transactions affecting the ownership of patents, microfilmed deeds, and indexes are also available.

    The Public Search Facility is located in the Madison East building on the first floor at 600 Dulany St., Alexandria, VA 22313. The telephone number is 571-272-3275.

    Users can access the full-text searchable database containing patent information for all U.S. patents granted since 1976 and all patent application publications (first published in March 2001), on the USPTO web site at www.uspto.gov/go/pats [e Biz] .

    You may retain a patent attorney or agent to conduct a complete search. For information on registered patent attorneys and agents in your area, you may visit the Office of Enrollment and Discipline web site athttp://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm.

    Inventors can also perform a preliminary search of patents at one of the Patent and Trademark Depository Libraries (PTDLs) established throughout the United States. These libraries have copies of patents in microfilm and/or optical disc format arranged in numerical order. They have classification search tools, automated search aids, and photocopy facilities available to the public. For information on your nearest PTDL, you may visit PTDL web site at www.uspto.gov/go/ptdl.

    >> see also How to Search

General - Patent Search - Other - Other

Technical Questions - Other

  • What is the mailing address for the pilot?

    Send any documentation and/or forms related to the pilot to: Mail Stop Peer Pilot, Commissioner for Patents, P.O. Box 1450, Alexandria VA 22313-1450.

  • Can I enter special keyboard characters into the Bibliographic Data portion of the EFS-Web screens (Application Data tab)?

    Special characters are only allowed within the EFS-Web Application Data screen for the Title of Invention and the Name of the First Inventor. The following characters are only allowed, in addition to all standard keyboard characters, in these two fields:

    ’,...,’,„¢,“,¸,¡,¢,£,¤,¥,§,©,ª,«,,®,°,±,²,³,µ,¹,º, »,¼,½,¾,¿, €,

  • How do I index transmittal letters for follow-on submission?

    Transmittal letters should be indexed as "Miscellaneous Incoming Letter".

  • Is there any built-in check to determine if all application parts needed for a filing date are provided and provide an alert if something is missing?

    EFS-Web does not perform any checks regarding the completeness of an application before filing.

  • Are my filing fees refundable if my patent application is not approved?

    No, filing fees are not refundable. The filing fee is not for a patent, but is a statutorily prescribed payment to the USPTO for services rendered in processing a complete application. This statutory fee is due upon filing of the application. For additional information, you may contact the Inventors Assistance Center (IAC).

  • Will comments related to non-prior art issues be permitted (e.g., comments regarding non-statutory subject matter)?

    Comments submitted via the Peer-to-Patent website are regulated by the website's submission rules and procedures, please see http://dotank.nyls.edu/communitypatent/about.html for more information. [Links to non-Federal Government Web sites do not imply endorsement of this particular organization or the content on these sites.]

    However, Examiners will only consider comments regarding the application of the submitted document as prior art. Other comments, such as a comment on the applicability of 35 U.S.C. § 112, will not be considered. These comments will be either redacted or discarded in their entirety by the Office.

    The prohibition on comments or explanations is intended to avoid even the appearance of a pre-grant opposition procedure. If the evidence is adequate, without any comment or explanation it should inform the examiner of possible statutory or regulatory impediments to approval for grant of the application.

  • What file format should I use to submit a Power of Attorney document via EFS-Web?

    Like other documents, the Power of Attorney documents should be submitted through EFS-Web as PDF files. The appropriate document description for Power of Attorney documents is "Power of Attorney".

  • What proof will I have that the USPTO has received my submission?

    You will receive an acknowledgment receipt that contains an EFS ID, Application Number, and Confirmation Number. This receipt is generated at the time of filing.

  • Are applications from all technologies eligible to participate?

    No, this pilot program will be restricted to applications assigned to Technology Center 2100 and Business Methods, Class 705.

  • What are the mailing addresses for any Peer Review related communications?

    Communications related to the review of patent applications participating in the project should be submitted via the Peer-to-Patent website via info@peertopatent.org.

    Communications, such as the Consent to participate in the Pilot, directed to the USPTO should be sent to:
    Mail Stop Peer Pilot
    Commissioner for Patents
    P.O. Box 1450
    Alexandria VA 22313-1450.

  • Are supplemental ADS forms filed by EFS-Web exempt from the rule that requires supplemental ADS forms to be marked up to show new matter and deleted matter?

    No, you must still submit the supplemental ADS with markups, underlining for additions and strikeouts for deletions.

  • I'm getting validation errors, what do the colored triangles mean?

    Yellow triangles [warning - yellow triangle] indicate that a warning message is associated with the PDF file.

    Red inverted triangles [error - red inverted triangle] indicate that an error has been found in the PDF file. You cannot proceed with submission when the red error triangle appears.

  • How can I access the RO/101 form for PCT applications?

    The USPTO Website contains a link to an editable PDF version of the RO/101 Request Form available at WIPO's website.

  • How do I make a maintenance fee payment for my patent and how do I find the payment amount due?

    Information is available on the Maintain Your Patent page. 

  • How many documents will be submitted?

    Up to the ten best documents, as determined by members of the Peer-to-Patent community, will be submitted to the USPTO from the Peer-to-Patent website.

  • Is there any danger that the USPTO will give others information contained in my application while it is pending?

    A. Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the Office.

  • Is the data in my Accelerated Examiniation (AE) petition form auto-loaded?

    No. The Accelerated Examination petition is manually processed.

  • What is a PKI certificate and how can I obtain one?

    A PKI (Public Key Infrastructure) certificate is a digital certificate issued by the USPTO to registered patent attorneys, registered patent agents, independent inventors, and limited recognition practitioners. The PKI certificate ensures your transmission via EFS-Web against unauthorized viewing, and allows you to view recent submissions in Private PAIR. More information regarding how to obtain a digital certificate is available at Customer Numbers and Digital Certificates. It is recommended that EFS users obtain a customer number and digital certificate as soon as possible so that USPTO can provide the most complete information and support possible.

  • Are reissue applications and reexamination applications eligible to participate?

    No, participating applications must have been filed under 35 USC § 111(a) or have entered the national phase under 35 USC § 371.

  • Can pilot applicants submit comments?

    Yes, any member of the public that is not a USPTO employee may participate in the pilot including the submission of commentary.

  • What is the advantage of using the USPTO Fillable Forms?

    The main advantage is that they are auto-loaded meaning that they do not need to be manually processed, which eliminates errors and provides your information to the USPTO in the exact format that you intended. Please note: If you print and scan this document, then it will not be auto-loaded.

  • Can paralegals and others who are not holders of PKI certificates file patent applications on behalf of the certificate holder using EFS-Web?

    Yes. A PKI (Public Key Infrastructure) certificate is a digital certificate issued by the USPTO to registered patent attorneys, registered patent agents, independent inventors, and limited recognition practitioners.

  • Do you have to pay maintenance fees on design or plant patents?

    No. Patent maintenance fees are only required for maintaining an original or reissue patent, except for a design or plant patent, based on an application filed on or after December 12, 1980.

  • Does the application have to be published?

    Yes, to be eligible for the pilot, the application must have a Pre-Grant publication date no earlier than one month prior to the filing date of a consent form which must be filed during the pilot (June 15th, 2007 to June 15th, 2009). Also, the application must publish prior to the current end date of the pilot which is June 15th, 2009.

  • Who can I contact if I have additional questions and/or concerns related to the pilot program?

    For further information on this pilot, please e-mail: PeerReviewPilot2007@USPTO.gov. General inquiries on the Community Patent Review Project may be addressed to info@peertopatent.org.

    Additionally, visit The Peer-to-Patent Project website at http://dotank.nyls.edu/communitypatent/about.html, this is a non-USPTO website developed by Community Patent Review Project and sponsored by New York Law School's Institute for Information Law and Policy which will manage the public aspects of the pilot. [These links to non-Federal Government Web sites do not imply endorsement of this particular organization or the content on these sites.]

  • The first named inventor in my application has only one name. What should I do?

    If the inventor has only one name, enter a period into one of the name fields.

  • Is there any built-in check to determine if all application parts needed for a filing date are provided and provide an alert if something is missing?

    EFS-Web does not perform any checks regarding the completeness of an application before filing.

  • Are PCT applications eligible?

    No, applications filed under the Patent Cooperation Treaty prior to entry into the national phase under 35 USC § 371 are not eligible to participate.

  • Is the application treated as an Accelerated Examination application?

    No. With the exception of the provisions of the limited waiver of 37 CFR §§ 1.99 and 1.291, the examination process for these applications will be performed in a normal manner following established methods.

    However, participating applications will be advanced out of turn for examination for the initial examination on the merits so the results of the pilot can be reviewed in a short time frame.

  • What is meant by "small entity status" or "micro entity status"?

    For patents, if the owner of the invention qualifies as a small entity or micro entity, the filing, issue, and maintenance fees are reduced by 50 percent or 75 percent, respectively.

  • Are supplemental ADS forms filed by EFS-Web exempt from the rule that requires supplemental ADS forms to be marked up to show new matter and deleted matter?

    No, you must still submit the supplemental ADS with markups, underlining for additions and strikeouts for deletions.

  • What proof will I have that the USPTO has received my submission?

    Once you have submitted your documents electronically, you will immediately receive an Acknowledgement Receipt, which contains critical information, including a time and date stamp of receipt, a listing of the files/documents associated with your submission, page counts of those files/documents where applicable, an application number and a confirmation number. This electronic receipt may be printed and it carries the security and authority of the Postcard receipt commonly provided in paper-filed applications and returned to you by the United States Patent and Trademark Office acknowledging receipt of your documents.

  • What if the EFS-Web System is Unavailable and a Document or Payment needs to be submitted?

    If the EFS-Web system becomes unavailable you may fax follow on documents and payment to the central fax at 571-273-8300 or mail to:

    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450

    New applications cannot be faxed but can be mailed to this address, hand delivered to the USPTO walk-up window, or filed electronically using EFS-Web Contingency. When mailing you may use Express Mail from USPS in accordance with 37 CFR 1.10.

  • What if the application is not published?

    Any application not published in time will be ineligible for the pilot.

  • Will the fillable form adjust font size for long names and/or titles?

    No, the fillable form will not adjust the font size.

  • http://www.uspto.gov/main/faq/p220efs283.htm

    Accelerated Examination can be filed for Design and Non-Reissue Utility applications.

  • I have already filed for Accelerated Examination in my application; can I also volunteer this application for the Peer-to-Patent pilot?

    No. Accelerated Examination Program participants are not allowed the opportunity for third party submissions (see 1308 OG 106).

  • How many applications can one person or company volunteer for this pilot?

    USPTO will accept no more than 25 total written consents (corresponding to 25 total separate applications) from an Applicant, Applicant's assignee (to include subsidiaries), or Applicant's affiliates. Patent applications that participate in the peer review process, but are not granted advancement of examination for any reason will not be counted against the 25 total for any one applicant.

  • What is the filing fee to apply for a patent?

    Information is available on the Patent FAQs page.

  • What file format should I use to submit a declaration via EFS-Web?

    Like other documents, the declaration should be submitted through EFS-Web as a PDF file. The appropriate document description for a declaration is "Oath or Declaration filed".

  • What happens if a name exceeds the field limit?

    The first and last name fields accept up to 50 characters. If a first or last name requires more than 50 characters, enter the first 50 characters.

  • How are Applications and/or Applicants chosen to participate in the pilot program (requirements, pre-requisites, etc.)?

    To participate in this pilot program, Applicant must comply with the following conditions:

    1. Applicant must submit to the Office the written consent form located at www.uspto.gov/web/patents/peeriorartpilot.consent.pdf with the consent naming the real party in interest for the application;
    2. The Office will accept no more than 25 total written consents (corresponding to 25 total separate applications) from an Applicant, Applicant's assignee (to include subsidiaries), or Applicant's affiliates;
    3. The application must be assigned to Technology Center 2100 or Business Methods, Class 705;
    4. The Pre-Grant Publication of the application must occur during this pilot and provide a period no less than three (3) months and no more than four (4) months for posting (and evaluation) at the Peer-to-Patent website;
    5. The consent includes an express written authorization for the Peer-to-Patent submission to the Office to include comments describing the relevance of each document to the disclosed invention as defined by the claims;
    6. The application must not have been previously filed for Accelerated Examination; and
    7. The application was filed under 35 USC § 111(a) or has entered the national phase under 35 USC § 371.

Application Processes - Technical Questions - Other - Popular Patent Application (EBC) Customer Questions

Patent Search - Other

Patent Law - Patent Business Goals

  • If a 35 U.S.C. § 111(a) continuation of the same International Application is filed, should the first line of the specification of the continuation application be amended to contain the relationship to the International Application?

    When a § 111(a) continuation of an International Application is filed on or after November 29, 2000, the first line of the specification must be amended, or an
    application date sheet must be submitted, within the time period set in amended 37 CFR 1.78(a)(2) to contain a reference to the relationship of the §
    111(a) continuation to the prior international application. For example, the language --This application is a continuation of YY/123,456, which was a national stage filing under 35 U.S.C. 371 of PCT/XX99/01234 filed June 1, 1999.--

  • Applicant filed a continuing application with a claim for the benefit of a prior-filed U.S. application on filing of the continuing application that correctly identified the application number of the prior-filed application and correctly provided the specific relationship of the prior-filed and continuing application (e.g., that the application was a continuation of the prior-filed application), but the incorrect filing date of the prior-filed U.S. application was identified in the benefit claim. If all the other requirements of 35 U.S.C. 120 and 37 CFR 1.78 are met, would the benefit claim be considered an incorporation by reference as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that applicant would be able to amend the continuing application to include the inadvertently omitted material (notwithstanding the error in the filing date of the 35 U.S.C. 111(a) application)?

    Yes. 37 CFR 1.78 does not require the reference to a prior-filed U.S. application filed under 35 U.S.C. 111(a) to identify the filing date of the prior-filed application. Thus, the benefit claim was properly made on filing of the continuing application and inadvertently omitted material may be added to the continuing application pursuant to 37 CFR 1.57(a).

  • What applications qualify for the prior art exclusion of 35 U.S.C. 103(c), as amended by the AIPA, of commonly owned or assigned prior art?

    The amendment to 35 U.S.C. 103(c) made by the AIPA is effective for applications filed on or after November 29, 1999. For the National Stage (35 U.S.C. 371) of International Applications, the international filing date must be on or after November 29, 1999 in order for applicant to invoke the exclusion of prior art under 35 U.S.C. 103(c) as amended by the AIPA. The date the applicant fulfilled the requirements of 35 U.S.C. 371(c)(1), (2) and (4) is not relevant in determining whether the application is entitled to the prior art exclusion under 35 U.S.C. 103(c) as amended by the AIPA. If a continuing application is filed after November 29, 1999, and claims the benefit of the prior international application filed prior to November 29, 1999, such continuing application would be entitled to revised exclusion provided in 35 USC 103(c). See "Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term "Original Application" in the American Inventors Protection Act of 1999," Notice, 1233 OG 54 (April 11, 2000) and "Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 USC 103(c)," Notice, 1241 OG 96 (Dec. 26, 2000).

    Some contents linked to on this page require a plug-in for PDF Files.

  • Applicant filed an after-final amendment and then subsequently filed an amendment with a request for continued examination (RCE) under 37 CFR 1.114. Would the amendment filed with the RCE be considered a supplemental amendment and, thus, not be entered as a matter of right?

    No, such an amendment is not a supplemental amendment. Any amendment filed with an RCE under 37 CFR 1.114 will be entered because it is a submission under 37 CFR 1.114(c) to the RCE. The Office will enter any previously filed unentered after-final amendment and the amendment filed with the RCE in the order in which they were filed, unless the applicant provides instructions not to enter the after-final amendment. To avoid non-compliance under 37 CFR 1.121 and simplify the entry of the amendments, applicant may file an amendment that includes any desired changes in the unentered after final amendment, and instructions not to enter the after-final amendment, when filing the RCE.

  • In view of the Patent Term Guarantee, does the United States Patent and Trademark Office plan to print an explicit indication of the expiration date on the face of a patent so that the expiration date can be ascertained without having to add the patent term extension to the original patent term?

    The United States Patent and Trademark Office does not print the expiration date on issued patents because the actual date a patent will expire is dependent upon a number of future events. The actual date any particular patent will expire is, for example, dependent upon whether: (1) all maintenance fees are timely paid; (2) the patent is disclaimed, either by a statutory disclaimer of all claims or a terminal disclaimer; (3) all of the claims of the patent are canceled during a reexamination proceeding; or (4) an extension under 35 U.S.C. 156 is granted. Since less than forty percent of patentees pay all three maintenance fees, an expiration date based upon a calculation of date that is twenty years from the earliest filing date under 35 U.S.C. 111(a), 120, 121, 363, or 365(c) plus any calculated extension under 35 U.S.C. 154(b) would be incorrect and misleading over sixty percent of the time. However, the front page of the patent will indicate the number of days of term adjustment to which the patent is entitled.

  • How should supplemental replies be physically treated for IFW applications if the reply is entered or not entered?

    When the examiner is ready to act on the application, the examiner will print out the first page of the supplemental reply, note "enter" or "do not enter," initial, date the notation, and turn the page in with the office action.

  • What type of submissions can be filed with EFS?

    EFS can be used to submit:

    • New utility patent applications,
    • Biosequence listings for applications previously filed in paper, and
    • Pre-grant publication submissions for previously filed applications, where the applicant wants to publish:
      • an amended or redacted version of the application rather than the application as originally filed,
      • a republication to correct or revise a publication, or
      • the application voluntarily because the application filed before 11/29/00 is not subject to publication.
    • Information Disclosure Statements (IDSs); and
    • Provisional applications.

    At this time EFS does not accept:

    • Design applications,
    • New plant applications,
    • Reissue applications,
    • International Patent Cooperation Treaty (PCT) applications, or
    • Reexamination requests.

    For more information on EFS, go to http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

  • When would applicant use the status identifier, (not entered)?

    When applicant submitted a new claim (e.g., Claim 10 (new)) in an after-final amendment that was denied entry, applicant should use the status identifier (not entered) for the new claim (e.g., Claim 10 (not-entered)) in any subsequent amendment.

  • If applicant submits paper copies of a sequence listing, will the Office count the sequence listing in the calculation of the application size fee?

    Yes, the sequence listing submitted on paper will be counted with the specification and drawings of the application. The Office will not count any sequence listing or computer program listing filed in compliance with 37 CFR 1.52(e) on a compact disc in the calculation of the application size fee.

  • How can I use private PAIR to correct bibliographic data?

    In the private side of PAIR (http://pair-direct.uspto.gov), the applicant should choose the Publication Review button, and then the Request Data Change button on the screen. The instructions will then be brought up, with a data entry box in which the changes can be inserted. For instance, the following text should be typed in the box: "An inventor has been omitted. John Doe should be added with a residence of Arlington, VA." Once the entry has been checked for accuracy, the Transmit Request button should be selected, and the information will be electronically sent to the USPTO. A copy of the request will not be placed in the patent application file, and applicant should only submit a request through PAIR to correct information where the computer records show information that is different from the application file. Requests filed through PAIR will come into the Electronic Business Center (EBC) Customer Support Center, where the data will be changed in the USPTO's computer database, and, once the data is corrected, the changes can be displayed in PAIR, and the EBC will mail the applicant a corrected filing receipt. The Customer Support Center of the Electronic Business Center can be reached by telephone at (703)305-3028. A request for a corrected filing receipt should not be submitted if the request is submitted through PAIR, since the PAIR request will result in the same correction being made.

    For more information on PAIR, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

  • Do the signature requirements of 37 CFR 1.4(d) apply to assignments that are attached to 37 CFR 3.73(b) papers supporting the right of the assignee to take action pursuant to 37 CFR 3.71 in an application or patent?

    No.

    An assignee, for example may take over the prosecution of an application, pursuant to 37 CFR 3.71(a) provided that it establishes ownership of the application to the satisfaction of the Director. See 37 CFR 3.73(b)(1). Such ownership may be established by submitting a copy of an executed assignment, 37 CFR 3.73(b)(1)(i), or a statement specifying the reel and frame number of where the assignment is recorded in the Office, 37 CFR 3.73(b)(1)(ii).

    As noted in B9, an assignment need not comply with the signature requirements of § 1.4(d), as compliance is required only for the cover sheet submitting the assignment. Similarly, the actual request by an assignee to conduct prosecution must comply with the signature requirements of 37 CFR 1.4(d), but a supporting unrecorded copy of an assignment, pursuant to 37 CFR 3.73(b)(1)(i), need not comply with the signature requirements of § 1.4(d). Note that the assignee could, in the alternative, have recorded a signature non-compliant assignment (so long as the cover sheet was signature compliant) and made reference thereto pursuant to 37 CFR 3.73(b)(1)(ii).

    In other words, an assignment document itself is not governed by the signature requirements of § 1.4(d)(2) because that would concern the validity of the assignment document, which the Office generally does not evaluate. Nevertheless, if the Director is not satisfied that ownership has been established (due to a suspect signature on the underlying assignment), then the purported assignee will not be permitted to control the prosecution. Thus, for example,. an electronic signature may be utilized on the assignment that does not comply with the requirements of 37 CFR 1.4(d)(2). Should, however, a handwritten signature on an attached assignment not appear to be in permanent dark ink or its equivalent, the lack of compliance with 37 CFR 1.4(d)(1) may cause the Office to question the authenticity of the document for purposes of establishing the right of a particular assignee to take the action requested.

    Applicants are reminded that 37 CFR 1.4(d)(4) provides for specific certifications made upon the presentation of any paper or document to the Office.

  • A 35 U.S.C. 102(e) rejection was made based on a US patent application publication in an application filed before 11/29/00. After the applicant had argued that such reference was not available as a prior art under 35 U.S.C. 102(e) as amended by AIPA (before the enactment of the Technical Amendments Act of 2002 (Pub. L. 107-273), the rejection was withdrawn and the case was allowed and issued as a patent. Could the application publication now be used as the sole basis for a reexamination to establish a substantial new question of patentability?

    Yes, a reexamination based on a patent or printed publication that was previously considered by the Office is no longer subject to the Portola bar pursuant to 35 U.S.C. 303(a) and 312(a) as amended by the Patent and Trademark Office Authorization Act of 2002 (Pub. L. 107-273).

  • Can applicant use the transmittal letter of a continuation or divisional application to amend the first sentence of the specification to add the benefit claim to the parent application?

    No, a preliminary amendment cannot be made in a transmittal letter or form for the filing of an application. The amendment to the specification that adds the specific reference to the parent application in the first sentence of the specification following the title must be provided on a separate sheet of paper in compliance with revised 37 CFR 1.121.

    Applicant may wish to provide the specific reference in an application data sheet (ADS) under 37 CFR 1.76 or in a new specification instead of filing a copy of the specification of the parent application with a preliminary amendment.

    The Office transmittal forms will no longer permit any preliminary amendment to be made in the transmittal form. If applicants are using a transmittal form that provides a box for a preliminary amendment, applicants are advised not to use such box, but to provide the preliminary amendment on a separate sheet of paper in compliance with revised 37 CFR 1.121.

  • Does an applicant who rescinded his non-publication request pursuant to 35 U.S.C. 122(b)(2)(B)(ii) prior to filing abroad have any duty to provide notification of the foreign filing under 35 U.S.C. 122(b)(2)(B)(iii)?

    Yes, notice of foreign filing is still required. Rescission does not nullify a nonpublication request. Rescission revokes the nonpublication request, but it does not erase the fact that the nonpublication request was made because a nonpublication request is more than a request that the application not be published, it is also an affirmative statement that the "invention disclosed in the application has not been and will not be the subject of an application in another country." If notice of foreign filing wasn't important even when the nonpublication request had been rescinded, then Congress would not have included both sections (ii) and (iii) in the statute (rescission and notice of foreign filing, respectively).

    35 U.S.C. 122(b)(2)(B) states (in part):

    (ii) An applicant may rescind a request made under clause (i) at any time.
    (iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.
    (iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).

    Furthermore, if 35 U.S.C. 122(b)(2)(B)(iii) clearly excluded applications in which a rescission had been made from the those applications in which notice of foreign filing was required, then such applications would not be required to have a notice of foreign filing. The request for nonpublication, however, is more than simply requesting nonpublication, it is an affirmative statement that the application has not been and will not be filed abroad. Therefore, one cannot simply rescind the nonpublication request and have the record be clear as to whether applicant has or will file in another country or under an international treaty ( e.g. , PCT) that requires publication. Since the statute does NOT exclude applications with rescissions from those applications in which a notice of foreign filing is required, all applications in which applicant has informed the Office that they will not "foreign file" via a nonpublication request require a notice from the applicant that, in effect, they changed their mind by providing an affirmative notice of foreign filing. See 35 U.S.C. 122(b)(2)(B)(iii).

    An applicant or patentee who merely rescinded their nonpublication request, and did not tell the Office that they foreign filed (and has foreign filed and did not provide notice before the date that is 45 days after the date of foreign filing) should promptly file a petition to revive or consider the application abandoned.

  • Does applicant have to submit a copy of a foreign reference if it was cited in a parent application?

    No. There has been no change in this practice. Section 609, I.A.2. of the MPEP states that an examiner will consider information which has been considered by the Office in a parent application when examining a continuation application. If the foreign reference was properly cited in the parent application and considered therein, the examiner will consider the foreign reference in the continuation and applicant need not supply a copy thereof in the continuing application (where applicant wishes the citation to be printed on the face of the patent the citation must be listed on an IDS in the continuation). If the examiner cannot obtain a copy of the foreign reference, the examiner can request that applicant again supply a copy of it.

  • Are the time periods to submit corrected drawings in response to the Notice to File Missing Parts and the Notice to File Corrected Application Papers extendable?

    Yes. The time period to file corrected drawings is extendable up to 5 months under 37 CFR 1.136(a) and in an exceptional situation, further extendable under 37 CFR 1.136(b). These Notices have been corrected to make it clear that the time period is extendable.

  • What are the patent term adjustment (PTA) implications of the OG notice?

    The Office will consider that it met the requirements of 35 USC 154(b)(1)(A)(i)-(iv) and implementing rules, 37 CFR 1.702(a)(1)-(4) when the Office mails the first rejection, objection, or other notice that is later reissued (e.g., remailed) because of the Japanese earthquake and/or tsunami. The Office will consider applicant to have failed to engage in reasonable efforts to conclude prosecution of the application under 37 CFR 1.704(b) if applicant does not respond within three months to any notice or any action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the mail date of the reissued action. The shortened statutory period continues to have no effect on the three-month period. See 37 CFR 1.704(b). In addition, the Office will continue to not consider the certificate of mailing or certificate of transmission date under 37 CFR 1.8 in calculating the patent term adjustment. See 37 CFR 1.703(f).

    For example: Application is filed on August 1, 2009, and the Office mails a first non-final Office action on October 1, 2010. One of the inventors is in an area of Japan affected by the earthquake and/or tsunami on March 11, 2011. On March 24, 2011, applicant mails a copy of the form PTO/SB/425 requesting that the Office action mailed on October 1, 2010, be reissued pursuant to the OG notice. The need for the reissuance of the Office action is due to the effects of the earthquake and/or tsunami. On March 27, 2011, the Office reissues (e.g., remails) the non-final Office action and restarts the three month period for reply.

    The Office will consider that the non-final Office action mailed on October 1, 2010, will meet the requirement of 35 USC 154(b)(1)(A)(i) and 37 CFR 1.702(a)(1), and the Office will not grant any patent term adjustment as it relates to those provisions.

    The Office will consider that applicant met the requirement of 37 CFR 1.704(b) if applicant files a reply within three months of March 27, 2011.

  • What is the application size fee (35 U.S.C. 41(a)(1)(G))?

    The application size fee is a fee for filing any application whose specification and drawings together exceed 100 sheets of paper (excluding any sequence listing or computer program listing filed either: (1) in an electronic medium in compliance with
    § 1.52(e), e.g., compact discs, or (2) via the Office's electronic filing system (EFS) in ASCII text as part of an associated file of the application (see § 1.52(f))). See 35 U.S.C. 41(a)(1)(G).

  • How do I get my results from the attorney exam?

    Examination test grades are available approximately two months after the exam. Grade information will automatically be sent to applicants by mail as soon as they are available. Re-grade information will be provided by mail as soon as they are processed. All re-grades are processed at the same time and results are mailed simultaneously. No status information will be available until after the re-grades are mailed. After you have passed the examination, your notification will be mailed to you and will include a registration data sheet and a provisional number. The provisional number allows you to practice before the U.S. Patent and Trademark Office during the Official Gazette public comment period. When using the provisional number it must be preceded by the letter "P" to indicate provisional status and you may not advertise yourself as registered. For more information, you may visit the USPTO's Office of Enrollment and Discipline Web site at http://www.uspto.gov/go/oed.

  • If the Office sent out a Notice of Non-Compliant Amendment and the reply to the Notice is still a non-compliant amendment, how should the Office treat the second non-compliant amendment?

    If the second non-compliant amendment again fails to comply with 37 CFR 1.121 for the same reason as cited in the Notice of Non-Compliant Amendment mailed by the Office, the technical support staff (TSS) should call the applicant to provide additional assistance and mail applicant a newly created form, "Failure to Acceptably Respond to Notice of Non-Compliant Amendment (37 CFR 1.121) No New Time Period for Reply is Provided."

    If the second non-compliant amendment fails to comply with 37 CFR 1.121 for a different reason, the TSS should mail another "Notice of Non-Compliant Amendment (37 CFR 1.121)" identifying the new problem.

  • An Office action was mailed on June 8, 2004 that set forth a three-month shortened statutory time period extendable under 37 CFR 1.136(a). If applicant files a reply to the Office action on December 8, 2004, how much is the extension of time fee that would be due?

    $1,020.00 ($510.00 for a small entity) because applicant would need to petition for a three-month extension of time. The revised extension of time fees apply because the payment is made on or after December 8, 2004, the effective date of CAA.

  • Does the Office intend to provide guidance as to the meaning of the term "substantially identical" as used in AIPA § 4504 to define when reasonably royalties will be available (35 U.S.C. 154(d)(2))?

    No, because the USPTO is not charged with administering provisional rights.

  • If an original drawing is intended to represent prior art, but is not labeled as such, can the drawing be fixed by Examiner's Amendment, rather than objecting to it?

    No. An Examiner's Amendment cannot be used to add text to a drawing. Applicant would need to submit a replacement drawing with the text identifying it as prior art.

  • Why is the Cooperative Research and Technology Enhancement Act of 2004 called the "CREATE" Act?

    The shortened named "CREATE" is from the first initial of each word in the title of the Act with the second word "Research" contributing the second letter in addition to the first letter. See the underlined letters as follows: The C ooperative Research a nd T echnology E nhancement Act of 2004.

  • Will the Office conduct any investigation regarding whether an applicant requesting the relief is actually entitled to the relief?

    The Office does not plan to investigate whether a particular applicant qualifies for the requested relief beyond making sure that the request can be granted. Thus, for a request for reissuance of an Office communication, the Office will make sure that a reply or response to the Office communication was outstanding on March 11, 2011, and the time period (as permitted to be extended under 37 CFR 1.136(a)) has not yet expired. The Office does not plan to investigate whether the need for the requested relief was due to the effects of the earthquake and/or tsunami of March 11, 2011. If there is some evidence in the record that applicant may not be entitled to the requested relief, the Office does have the authority to require additional information. Applicants should also keep in mind that the request for relief is considered a certification under 37 CFR 11.18(b).

  • If a nonprovisional application was filed under 35 U.S.C. 111(a) before December 8, 2004, the effective date of the Consolidated Appropriations Act, but the basic filing fee is being paid after the effective date, would the search fee (35 U.S.C. 41(d)(1)), the examination fee (35 U.S.C. 41(a)(3)), and the application size fee (35 U.S.C. 41(a)(1)(G)) be required?

    No, the effective date provisions of the Consolidated Appropriations Act provide that 35 U.S.C. 41(a)(1)(G), 41(a)(3), and 41(d)(1) apply to applications filed under 35 U.S.C. 111(a) only if the application is filed on or after the effective date of the Consolidated Appropriations Act.

  • I did not use the USPTO form, "Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)" (posted at http://www.uspto.gov/web/forms/sb0035.pdf [PDF] ), when I filed a patent application. Instead I put the request for non-publication in the body of the declaration for the patent application under 37 CFR 1.63. My application was assigned a publication date. How can I get the non-publication request treated and not have my application published?

    A request for non-publication will not be recognized unless it is conspicuous. See 37 CFR 1.213(a)(2). Providing text as one paragraph among numerous other paragraphs with no highlighting of the request for non-publication is not conspicuous, and thus the Office's assignment of a publication date was appropriate. To avoid publication you may expressly abandon the application, and file a new application under 37 CFR 1.53(b), claiming priority to the earlier-filed application, with a "Nonpublication Request under 35 U.S.C. 122(b)(2)(B)(i)" (posted at http://www.uspto.gov/web/forms/sb0035.pdf [PDF] ) or make the request and certification in a similarly conspicuous manner when filing the patent application. If your application has been assigned a publication date within the next one to six months, you should consider filing a petition for express abandonment under 37 CFR 1.138(c). If your application has been assigned a publication date within the next four weeks, then it is too late to avoid publication of the application. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final Rule, 65 Fed. Reg. 57024, 57034, Sep. 20, 2000, 1239 Off. Gaz. Pat. Office 63, 73 (October 10, 2000) . Applicant would have a similar remedy in other situations where the request is not conspicuous, for example, where the request is in the specification of the application, on a fee transmittal sheet, or buried in the transmittal letter.

  • Can an S-signature be utilized by the party signing a 37 CFR 1.8 certificate of mailing, such as on an amendment to a nonprovisional application, as that party may not be a registered practitioner?

    Yes. 37 CFR 1.4(d)(2) provides that "[c]orrespondence being filed in the Office in paper ... for a patent application ... may be S-signature signed ...." This might occur on correspondence faxed directly from a PC with a Certificate of FAX transmission. Section 1.4(d)(2) explains S-signature requirements generally as to any person signing, whereas, § 1.4(d)(2)(ii) explains additional S-signature requirements as to use of an S-signature by a "registered practitioner."

  • Is a letter to the Official Draftsman required when amendments to drawings are being submitted?

    No, a letter to the Official Draftsman is not required. Instead, drawing amendments should be treated in the same paper as amendments to the specification, claims or abstract. See 37 CFR 1.121(d). If the drawing amendments are treated in a separate paper, no objection will be made merely because a separate paper has been used so long as the requirements of 37 CFR 1.121(d) are met.

  • If applicant filed several multiple dependent claims, what multiple dependent claim fees are due?

    The fee for an application that contains at least one multiple dependent claim is $360.00 ($180.00 for a small entity) if applicant pays the multiple dependent claim fee on or after December 8, 2004. The Consolidated Appropriations Act did not change the way the multiple dependent claim fee applies. The multiple dependent claim fee is still due only once in an application at the time of the presentation of the first multiple dependent claim. A multiple dependent claim is a dependent claim that refers back in the alternative to more than one preceding independent or dependent claim. For fee calculation purposes, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein and any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. See MPEP 608.01(n) and 37 CFR 1.75(c). To assist in the computation of the fees for multiple dependent claims, applicant may use Form PTO-1360 or PTO/SB/07.

  • Applicant filed a benefit claim to an earlier provisional application within four months from the actual filing date of a utility non-provisional application filed on or after November 29, 2000. Applicant, however, submitted a benefit claim that included a relationship of the applications in the first sentence of the specification (e.g., "This is a continuation of the provisional application, 60/xxx,xxx, filed on 12/01/01"). Since a benefit claim that includes a relationship is considered a claim under 35 U.S.C. 120, 121, or 365(c), can applicant correct the benefit claim under 35 U.S.C. 120, 121, or 365(c) to a benefit claim under 35 U.S.C. 119(e) after the time period set forth in 37 CFR 1.78(a)(5) without filing a petition under 37 CFR 1.78(a)(6) and the surcharge set forth in 37 CFR 1.17(t)?

    Applicant can correct the benefit claim during the pendency of the application by submitting an amendment changing the first sentence of the specification (e.g., "This application claims the benefit of the provisional application, 60/xxx,xxx, filed on 12/01/01"). The petition under 37 CFR 1.78(a)(6) and the surcharge would not be required because the Office was able to correctly schedule the application for publication with the relationship given.

    If the application has issued as a patent, however, the correction cannot be made.
    The claim that one application is a continuation or division of another is a benefit claim under 35 U.S.C. 120, 121, or 365(c), and the term of a patent is measured from the prior application's filing date. Removing the benefit claim under 35 U.S.C. 120, 121, or 365(c) would thus have the effect of lengthening the term of the patent, which cannot be done by Certificate of Correction. Furthermore, removing the benefit claim in a reissue application will not change the term of the patent.

  • If an examiner wants to ask for a copy of an incorporated reference, e.g., to see the incorporated material in context of the reference, should such request be done utilizing a requirement for information under 37 CFR 1.105?

    No. Applicant may be required to submit a copy of the incorporated reference pursuant to 37 CFR 1.57(e), which is more specific than 37 CFR 1.105.

  • What type of prior art can be disqualified in view of a joint research agreement?

    35 U.S.C. 103(c), as amended by the CREATE Act, continues to apply to subject matter (whether a patent document, publication, or other evidence) which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g), and which is being relied upon in a rejection under 35 U.S.C. 103(a).

    If the subject matter also qualifies as a reference under 35 U.S.C. 102(a) or (b) and which is being relied upon in a rejection under 35 U.S.C. 103(a), 35 U.S.C. 103(c) cannot be relied upon to disqualify such subject matter until the applicant has shown that the subject matter is not prior art under 35 U.S.C. 102(a) or (b). For example, if the reference is a U.S. patent or U.S. patent application publication which is prior art under 35 U.S.C. 102(a) and (e), applicant could swear behind the reference's publication date pursuant to 37 CFR 1.131 to disqualify the reference as prior art under 35 U.S.C. 102(a), and then use 35 U.S.C. 103(c) to disqualify the reference, if appropriate.

    If the rejection is anticipation under 35 U.S.C. 102(e), (f), or (g), 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome the anticipation rejection. Likewise, 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome any double patenting rejection.

  • Applicant canceled a claim and renumbered the other claims during the international stage of an international application that has subsequently entered the national stage. Applicant would like to file a preliminary amendment to the claims in the national stage of the international application, what status identifier(s) should he/she use for the renumbered claims? (posted August 14, 2003; revised August 21, 2003, old E1))

    Assuming that the amendment under Article 19 or 34 made during the international phase is entered in the U.S. national stage application (this will not be the case where, for example, a required English translation of the amendment is not timely furnished), the status identifier, "previously presented", should be used for renumbered claims that are not being amended in the preliminary amendment. The status identifier, "currently amended", should be used for renumbered claims that are being amended in the preliminary amendment.

    For example, an applicant filed an international application that originally included independent claim 1, and dependent claims 2, 3 and 4. During the international stage, Claim 1 was amended, claim 3 was canceled, and claim 4 was renumbered as claim 3. If the amendment made during the international phase is entered in the U.S. national stage application, then a preliminary amendment adding two new claims would include a claim listing as follows:

    Claim 1 (previously presented)
    Claim 2 (original)
    Claim 3 (previously presented)
    Claim 4 (new)
    Claim 5 (new)

  • 37 CFR 1.704(c)(10) provides that submission of an amendment under 37 CFR 1.312 or other paper after a notice of allowance has been mailed is a circumstance that constitutes a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application. Are formal drawings an "other paper" within the meaning of 37 CFR 1.704(c)(10), such that the submission of formal drawings after a notice of allowance is mailed will result in reduction of any patent term adjustment? What if the drawings are required by the notice of allowance?

    Yes (regardless of whether "formal," corrected, or replacement drawings are required by the notice of allowance). 37 CFR 1.85 no longer permits applicants to request that a requirement for correction of drawings be held in abeyance until a notice of allowance is mailed. The Office encourages that drawings appropriate for publication be submitted early in the prosecution of the patent application so that any patent application publication will be published, and the application will be examined, with the best quality drawings. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final rule, 65 Fed. Reg. 57023, 57032, 57055 (Sept. 20, 2000). Applicants must file any "formal," corrected, or replacement drawings prior to the mailing of a notice of allowance to avoid a reduction of any patent term adjustment.

  • Are claims cancelled by preliminary amendment at the time of filing an application considered originally presented for purposes of the disclosure?

    Yes. The Office will treat the material in the cancelled claims as being originally presented and therefore retrievable and subject to being later added back and supported as of the filing date of the application.

  • The filing receipts that I receive look different, sometimes they have assignee information and sometimes they do not. Should they look the same?

    If applicants have provided assignment information on the transmittal letter or on an application data sheet, or submitted it through PAIR, a field labeled "Assignment for Published Patent Application" will appear after the list of the inventors. If no assignment information has been provided for purposes of printing the patent application publication, this field will not appear.

  • How do I access my patent application publication on the Internet?

    The publication will be available on the USPTO home page in the Searchable Patent Databases section http://www.uspto.gov/patft and information about the application will also be available on PAIR (Public and Private).

  • The same facts as in C3(b) but the first continuation is abandoned. Applicant cannot meet the standards for revival of the abandoned first continuation either under the unintentional or unavoidable provisions of 37 CFR 1.137. Is there any other remedy to insert the inadvertently omitted material into the abandoned first continuation application?

    Possibly. 37 CFR 1.183 provides that a nonstatutory requirement of the rules, such as pursuant to 37 CFR 1.57(a) that an application be amended to include the inadvertently omitted material before abandonment of the application, may be waived in extraordinary situations where justice requires. The inability of an applicant to revive an application for the sole purpose of amending the application by the addition of inadvertently omitted material such that loss of patent rights may result could possibly on a case by case basis be remedied pursuant to 37 CFR 1.183. Applicant would at a minimum be required to show that applicant could not meet the unintentional or unavoidable standards and that loss of patent rights would occur.

    A petition under 37 CFR 1.182 would not be appropriate as it is a requirement of 37 CFR 1.57(a) that the application be amended prior to abandonment of the application.

  • Can an international application be published multiple times in different languages by the World Intellectual Property Organization (WIPO) under PCT Article 21(2)?

    No, WIPO only publishes an international application in a single publication language in accordance with PCT Article 21(2). WIPO may republish an international application in the same publication language when there is an error in the original publication from what should have published (e.g., publishes the wrong drawings or leaves out a page of claims, etc.). There currently is no vehicle for republication in a different language.

  • If the supplemental reply filed in compliance with 37 CFR 1.121 is scanned into the IFW and forwarded to the examiner after the examiner starts acting on the first reply, can the examiner deny entry of the supplemental reply?

    Yes, the examiner may deny entry of the supplemental reply if the supplemental reply is filed on or after October 21, 2004, in a non-suspension period, and it not limited to one of the situations listed in 37 CFR 1.111(a)(2)(i).

  • Will Divisionals, Continuations-in-Part, Continuations, and/or Continued Prosecution Applications (CPA) filed on or after 11/29/00 (the effective date of the eighteen-month publication provisions of the AIPA), based on original applications filed before the effective date, be subject to the mandatory publication?

    Yes. Any nonprovisonal application (other than for a design patent) filed on or after November 29, 2000 is subject to the eighteen-month publication provisions of the AIPA. This includes continuation, divisional, and continuation-in-part applications of applications filed prior to November 29, 2000. It does not matter whether the continuing application was filed under 37 CFR 1.53(b), or as a CPA under 37 CFR 1.53(d). Since a request for a continued examination (RCE) under 37 CFR 1.114 is not a continuing application, filing a RCE of an application filed prior to November 29, 2000 will not make that application subject to the eighteen-month publication provisions of the AIPA.

  • What procedure (form paragraph/signature) is needed for approval of a requirement for information related to the current amendment (interrogatories, stipulations and types of factual information concerning, the related art, the disclosure, claimed subject matter, other factual information pertinent to patentability, or the accuracy of the examiner's stated interpretation of such items)?

    Each TC will determine which management personnel must review such a requirement before mailing. Currently, the Office does not intend to develop form paragraphs as the types of information to be required are not routine and should be treated on a case by case basis.

  • Is there a form for an early publication request?

    No, in an application filed on or after 11/29/00, applicant may request early publication of an application with any conspicuous letter requesting early publication. The request must include the publication fee. See 37 CFR 1.18(d). Note that if early publication is requested, and the publication fee paid, applicant will not be required to pay the publication fee at allowance.

  • When is a claim listing required?

    Any amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented.

  • Would sheets of paper making up the English translation of a non-English language specification be counted for the purpose of determining the amount of application size fee due?

    No, the Office will not count the sheets of paper making up any English translation of a non-English language specification.

  • Does this change in the law mean that the 35 U.S.C. 371(c)(1), (2) and (4) date is "no longer a US filing date?"

    The date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled ( e.g. , the 371(c) date) is not, and never was, a US filing date even prior to the AIPA revision to 35 U.S.C. 102(e). Prior to the amendments to 35 U.S.C. 102(e) by the American Inventors Protections Act of 1999 (AIPA), 35 U.S.C. 102(e) (e.g., pre-AIPA 102(e)) simply equated the 371(c) fulfillment date to a US filing date for prior art purposes. Although the USPTO uses the 371(c) date like a US filing date for processing purposes (and even indicates the 371(c) date as the US filing date on the official filing receipt), legally the 371(c) date was never considered to be a US filing date. The national stage application continues to be considered filed on the international filing date for all purposes except as provided in 37 U.S.C. 102(e). See the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001), section 1893.03(b).

  • Is a claim listing required for preliminary amendments present on the filing date of the application?

    Yes, a claim listing of every claim ever presented in the application is required, even for preliminary amendments present on the filing date of the application. The status identifier, (new), instead of (original), should be used for claims added by a preliminary amendment, even when the preliminary amendment is present on the filing date of the application and the first executed oath or declaration refers to the preliminary amendment. Only the claims presented in the original specification should be identified using the status identifier, (original). Claims that are canceled by a preliminary amendment present on the filing date of the application are required to be listed and identified using the status identifier, (canceled), in the preliminary amendment and any subsequent amendments.

  • The projected publication date of my application is not for another nine months. Surely the patent will issue before that date. Do I still need to pay the publication fee?

    Yes. You must pay the publication fee within the time period set forth in the Notice, and may request a refund if the application is not published.

  • Can an examiner reject a claim in an application being examined under 35 U.S.C. 135(b)(2) as being statutorily barred by the publication of another application?

    Yes. Applicants have one year from the publication date of a published application to present the same or substantially the same claim as a claim in a published application. When the claim is, however, presented later than one year after the publication date, a rejection under 35 USC 135(b)(2) is proper. Thus, a rejection under § 135(b)(2) should be made when:

    • The effective filing date of the claim in an application being examined is later than the publication date of the published application;
    • The application being examined is claiming the same invention as claimed in the application publication, i.e., the claim in the application being examined is the same as, or for the same or substantially the same subject matter as, the published claim in the application publication; and
    • The presentation of the claim in the application being examined is later than one year after the publication date of the published application

    Note:

    • A rejection under 35 USC 102(a) and 102(e) should also be made, since the effective filing date of the claim in the application being examined is later than the publication date of the published application.
    • The published application could be a U.S. patent application or an international application designating the United States
  • What is the document code for photos of models? Will the photos be scanned into IFW?

    The document code for photos of models is "REM." The photos of models must be scanned into IFW.

  • How do I find out whether a patent application publication has been assigned?

    If applicant requested the assignment information to be printed on the patent application publication, then the Office prints the assignee on the patent application publication. If no assignment information is included, then no assignee field will appear. There is no legal effect to this information when it is included or not included on a patent application publication (or patent). It is included for informational purposes only. Assignments are recorded in a special database upon payment of the statutory fee, and meeting other regulatory requirements. Assignment information is publicly available for patent application publications pursuant to 37 CFR 1.12(a)(1) from the Patent Assignment Search Room, which can be reached by telephone at (703) 308-2768.

  • Can an applicant request reissuance of an Examiner's Answer so that applicant would have additional time to file a reply brief?

    Yes. A request for reissuance of an Examiner's Answer must be made within two months of the mailing date of the Examiner's Answer and the Office must reissue (e.g., remail) the Examiner's Answer within the two month time period.

  • What fees are required for filing a provisional application under 35 U.S.C. 111(b) filed on or after December 8, 2004, the effective date of the Consolidated Appropriations Act?

    The following fees are required:

    a. The provisional basic filing fee;
    b. The application size fee for any application whose specification and drawings exceed 100 sheets of paper (excluding any sequence listing or computer program listing submitted either: (1) in an electronic medium in compliance with § 1.52(e), e.g., compact discs, or (2) via the Office's electronic filing system (EFS) in ASCII text as part of an associated file of the application (see § 1.52(f))); and
    c. The late filing surcharge if the basic filing fee or cover sheet (§1.51(c)(1)) is filed later than the filing date of the provisional application.

  • I received a "Notice of Allowance and Fee(s) Due" requiring a publication fee. I have the following question regarding the publication fee. The projected publication date of my application is not for another nine months. Surely the patent will issue before that date. Do I still need to pay the publication fee?

    Yes. You must pay the publication fee within the time period set forth in the Notice, and may request a refund if the application is not published.

  • The MPEP states that examiners are responsible for notifying applicants of the status of an application where there is an improper signature and the need for correction by the appropriate party. MPEP 714.01(a). Does this mean that examiners are now responsible for sending out letters of improper signature for failing to meet the requirements of the newly created signatures under § 1.4 (e.g., for improper § 1.4(d)(2) S-signatures on amendments)?

    Yes, the examiner must notify applicant of an improper signature as has always been the case. MPEP 714.01(a). The presence of an appropriate signature is to be checked at least initially by the LIE. Where the LIE discovers an improper signature or lack of any signature, or where the lack of a signature or an improper signature is later discovered by the examiner, it must be corrected by the examiner notifying applicant of the need for correction.

  • If applicant files replacement drawings without any other amendments after a non-final Office action and the replacement drawings are not filed in response to the non-final Office action, how should the Office treat such drawing submission?

    The drawing submission should be entered, but the time period for applicant to file a reply to the non-final Office action continues to run. If the drawings are in compliance with § 1.121(d), acknowledgement of the drawing submission should be indicated in the examiner's next Office action.

    When the applicant subsequently files a reply, the technical support staff (TSS) will review both the drawing submission and the reply to determine whether they are in compliance with 37 CFR 1.121. If the drawing submission or the reply is non-compliant, the TSS will mail a notice of non-compliant amendment notifying applicant of the non-compliance.

  • A patent includes 6 independent claims and 30 total claims. If applicant filed a reissue application prior to December 8, 2004 with 3 independent claims and 20 total claims, and then the applicant subsequently presented 7 independent claims and 31 total claims on or after December 8, 2004, how much excess claims fees are due?

    The excess claims fees for the four independent claims in excess of three (e.g., 4 x $200.00 = $800.00) and the eleven claims in excess of twenty (e.g., 11 x $50.00 = $550.00) are due. Note: prior to CAA, the excess claims fees only apply to the 7th independent claim and the 31st claim.

  • Can applicant file an amendment and a petition under 37 CFR 1.78(a) without filing a request for certificate of correction or a reissue application to correct a patent that issued from an application filed on or after November 29, 2000 to add a benefit claim of a prior-filed non-provisional application?

    No, applicant must file either a reissue application or a request for certificate of correction with an amendment adding the specific reference of the prior-filed application to the first sentence of the specification and a petition under 37 CFR 1.78(a)(3) to correct the patent. See MPEP 1401-1460 for more information on reissue applications and MPEP 1481 for more information on requests for certificate of correction.

  • An application filed after October 21, 2004 contains duplicate tables in the specification and drawings after the effective date for the prohibition of such duplication. What is the examiner's obligation?

    While an examiner will obviously review both the specification and drawing(s) during examination, the examiner need not specifically check an application containing tables (or sequence listings, 37 CFR 1.83) to see if there is duplication in the tables between the specification and drawings, particularly where there are extensive disclosures. Where, however, an examiner becomes aware of and notes the existence of such duplication in an Office action, the examiner must insist on compliance with the rule against duplication as the examiner cannot waive the rule.

  • What amendments are required to the specification in order to seek disqualification of a prior art reference based on a joint research agreement?

    In addition to providing a statement, the applicant must also amend the specification to disclose the names of the parties to the joint research agreement. See 35 U.S.C. 103(c)(2)(C) and 37 CFR 1.71(g).

  • If an applicant is filing a request for reissuance of an Office communication that was outstanding on March 11, 2011, does the applicant need to pay any extension of time fees due at that point based on the original mailing date of the Office communication?

    No, applicant does not need to pay any extension of time fees when filing a request for reissuance of an Office communication.

  • One application is filed with a preliminary amendment to the specification and a second application is filed with a preliminary amendment to the claims. Both applications are filed with executed 37 CFR 1.63 declarations that do not refer to the preliminary amendments. What is the examiner's responsibility in regard to 37 CFR 1.115 requiring an oath or declaration under 37 CFR 1.63 referring to any preliminary amendment that contains subject matter not otherwise present in the specification or drawings?

    The examiner is not required to review the preliminary amendments to determine if the preliminary amendments contain subject matter not otherwise included in the specification or drawings. Such responsibility has been placed with applicant. If, however, the examiner should become aware that a preliminary amendment contains subject matter not otherwise present in the original specification including the claims or drawings, the examiner may advise applicant that a new oath or declaration under 37 CFR 1.63 that refers to the preliminary amendment should be submitted and identify the pertinent subject matter. It is then up to applicant to determine whether such oath or declaration should be filed and file one where warranted. The examiner should not insist on such submission nor continue to advise applicant for the need for such submission where one is not filed.

  • Where can I find the form for the certification under Subtitle E of the American Inventors Protection Act of 1999 that no foreign filing is planned for the invention described in a new application?

    The new form PTO/SB/35 "Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)" is available at: http://www.uspto.gov/web/forms/sb0035.pdf [PDF]

    For more information on nonpublication request, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

  • I filed a continued prosecution application (CPA) in a 1.53(b) application that did not include a continuity claim to an earlier nonprovisional application. I now want to add the continuity claim to the earlier nonprovisional application under 35 U.S.C. 120 in the CPA. The 1.53(b) application was filed before 5/29/00, and the CPA was filed on or after 11/29/00. The time period set forth in 37 CFR 1.78(a) (2) (i.e., the later of 4 months from the actual filing date of the CPA or 16 months from the filing date of the earlier nonprovisional application) for filing a benefit claim to the earlier nonprovisional application applies to the CPA. Such time period, however, has expired for adding the reference of the earlier nonprovisional application in the first sentence of the specification or in an application data sheet, even if the time period is measured from the filing date of the CPA. What do I need to submit for claiming the benefit of the earlier nonprovisional application?

    You will need to file: (1) a petition under 37 CFR 1.182 requesting entry of an amendment into an abandoned application; (2) the petition fee set forth in 37 CFR 1.17(h); and (3) an amendment to add the reference of the earlier application to the first sentence of the specification. 35 U.S.C. 120 permits the entry of a subsequent amendment in an abandoned application to include the benefit of an earlier filing date for purposes other than prosecution. See Sampson v. Commissioner , 195 USPQ 136 (D.D.C. 1976). Please note that a petition to accept an unintentionally delayed claim under 37 CFR 1.78(a)(3) and the surcharge under 37 CFR 1.17(t) are not required in the CPA since the rule specifically provides for an exception for continued prosecution applications.

  • Applicant filed a U.S. application under 35 U.S.C. 111(a) with a benefit claim present on filing to a prior-filed international application designating the United States of America that identified the international application and provided the specific relationship of the applications (e.g., that the application was a continuation of the prior-filed application), but an incorrect international filing date was identified in the benefit claim. The international application did not enter the national stage. If all the other requirements of 35 U.S.C. 120 and 37 CFR 1.78 are met, would the benefit claim be considered an incorporation by reference as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that an applicant would be able to amend the 35 U.S.C. 111(a) (bypass) application to include inadvertently omitted material (notwithstanding an error in the international filing date)?

    No. 37 CFR 1.78 requires that the reference to a prior-filed international application designating the United States must identify both the international application number and the international filing date.

  • Under the amended 35 U.S.C. 103(c), what type of evidence will provide proof that the inventions were commonly owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made?

    To disqualify a reference under 35 U.S.C. 103(c), applicant needs to supply evidence that the invention described in the application for patent and the invention described in the "prior art" reference applied against the application were commonly owed by, or subject to an obligation of assignment to, the same person, at the time the invention in the application for patent was made. The time requirement "at the time the invention was made" is required by statute. See 35 U.S.C. 103(c).

    Applications and references will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, at the time the invention was made, if the applicant(s) or an attorney or agent of record makes a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. Thus, a statement, by itself, will be sufficient evidence. For a more detailed explanation, see the "Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 U.S.C. 103(c)," 1241 OG 96 (Dec. 26, 2000).

  • Applicant files a request for continued examination (RCE) under 37 CFR 1.114 after receiving an advisory action that notifies the applicant that an after-final amendment will not be entered. The Office entered the RCE and the after-final amendment as the submission to the RCE. Would an amendment or affidavit filed shortly after the filing of the RCE be considered a supplemental reply and, thus, not be entered as a matter of right?

    Yes, such an amendment or affidavit filed after the filing of an RCE under 37 CFR 1.114 will not be entered as a matter of right unless a request for suspension of action under 37 CFR 1.103(c) and the required fee are filed with the RCE.

  • May an applicant obtain patent term adjustment even if prosecution is less than 3 years?

    Yes, assuming the application is eligible, patent term adjustment is available under either 35 USC 154(b)(1)(A) (administrative delays) or (C) (interferences, secrecy orders and successful appeals) regardless of how long the application was pending in the Office. See 37 CFR 1.702(a), (c), (d), and (e).

    Example: An application is filed 6/1/00. A notice of allowance is mailed 9/1/01. The issue fee is paid and all formal requirements are satisfied on 12/1/01. The patent is not issued until 5/1/02. As the patent was not issued in four months following the payment of the issue fee, the period of delay from 4/2/02 to 5/1/02 would give rise to patent term adjustment pursuant 35 USC 154(b)(1)(A)(iv) and 37 CFR 1.702(a)(4) and 1.703(a)(6).

  • When is a reply considered supplemental?

    A supplemental reply is a reply filed after a complete (37 CFR 1.111(b)) first reply is filed to an Office action, but before another Office action is mailed in response to the first reply.

  • Where does an applicant send the "paper-copy" of an EFS redacted publication request?

    Mail Stop PGPUB, Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450.

  • How should I amend a formula in a claim?

    Applicants may use one of the following methods, for example, change "H4" to "H2" in a chemical formula:

    (1) Strikethrough and underlining the whole formula.

    Claim 1 (currently amended) A curing agent for epoxy resins comprising pyromellitic dianhydride, C6H4 (C2O3)2 C6H2 (C2O3)2 .

    (2) Doublebrackets and underlining the whole formula.

    Claim 1 (currently amended) A curing agent for epoxy resins comprising pyromellitic dianhydride, [[C6H4(C2O3)2]] C6H2 (C2O3)2 .

    (3) Delete the claim and replace it with a new claim.

    Claim 1 (canceled).
    Claim 2 (new) A curing agent for epoxy resins comprising pyromellitic dianhydride, C6H2 (C2O3)2.

    Do not use strikethrough or doublebrackets to delete only subscript "4" and use underlining to add only subscript "2" in the formula.

  • If applicant electronically files an application under 35 U.S.C. 111(a) in compliance with the Office's electronic filing system (EFS) requirements, how would the Office count the pages of the specification and drawings for the purpose of determining the amount of application size fee due?

    The paper size equivalent of the specification and drawings of an application submitted via EFS will be considered to be seventy-five percent (75%) of the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of determining the application size fee. Applicant may check private PAIR system for the number of sheets of paper.

  • I can't find a bibliographic review button in private PAIR. I only see a contents button. Where is it?

    The bibliographic review button is only available for applications assigned a projected publication date.

  • A continuing application is filed that inadvertently leaves out material that only appears in an original claim of the prior application. Can 37 CFR 1.57(a) be utilized to amend the continuing application to include the omitted material?

    Yes, the disclosure of the continuing application may be amended and a claim containing the inadvertently omitted material added, assuming compliance with the requirements of 37 CFR 1.57(a), such as the benefit claim being present on filing of the continuing application. Applicant must, however, file a corrective amendment in order for the omitted material to be included in the application. Any amendment, of course, must be commensurate in scope with the original claim.

  • When did the 35 U.S.C. 102(e) dates stop being printed on patents?

    The Office stopped printing the 102(e) dates on patents with the issue of May 28, 2002.

  • If the amendment that would otherwise place the application in condition for allowance (e.g., a reply to a non-final Office action or an after-final amendment) includes minor non-compliance such as an incorrect status identifier, can the examiner correct the non-compliance and allow the application?

    Yes, the examiner may enter the non-compliant amendment and correct the non-compliance in an examiner's amendment. Since the correction is not substantive, the examiner may make the correction in an examiner's amendment without the applicant's authorization and/or after the statutory period for reply set forth in the last Office action.

    Note: Examiner's amendments are at the discretion of the examiner and applicants should not expect examiner's to take corrective action if an amendment fails to comply with 37 CFR.

  • If my application was filed prior to November 29, 2000, how do I request a voluntary publication?

    A request for voluntary publication must be filed via the Electronic Filing System (EFS) in compliance with 37 CFR 1.221. If the applicant submits a request that does not meet the EFS requirements , the request will be dismissed. Any processing fee paid (including those authorized to be charged, e.g., to a deposit account) will be retained. If applicant meets the EFS requirements, but does not include the publication and processing fees as set forth in 37 CFR § 1.18(d) (currently $300) and 1.17(i) (currently $130), respectively, the Office will send the applicant a letter requiring the fees. The publication of the application will be delayed.

    Alternatively, if the application was filed before 5/29/00 (and no prior CPA was filed on or after 5/29/00), the application may become eligible for publication, if the applicant files a CPA. The contents of originally filed prior application will be published. The disadvantage to filing a CPA rather than an EFS submission is that any amendments will not be published with the application. A CPA may not be filed in an application filed after May 29, 2000.

    For more information on voluntary publication, see Helpful Hints Regarding Publication of Patent Applications , 1249 OG 83(August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

  • Where are pending U.S. applications to be cited on an Office IDS form so that they will be considered and listed on the patent?

    Pending published U.S. applications are to be cited as U.S. application publications on the form PTO/SB/08A section "U.S. PATENT DOCUMENTS." Pending U.S. applications that are not publishedare to be cited as pending applications on the form PTO/SB/08A section "NON PATENT LITERATURE DOCUMENTS."

  • How do I request a republication of an application to correct or revise a patent application publication?

    Any request for the republication of an application previously published must be filed using the Electronic Filing System(EFS). If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed.

    To correct or revise applicant or non-material errors, the applicant must pay publication and processing fees as set forth in 37 CFR § 1.18(d) (currently $300) and 1.17(i) (currently $130), respectively. If there is no payment of fees, the USPTO will send the applicant a letter requiring the fees. The republication of the application will be delayed.

    There are no fees due for material errors, which are apparent from the USPTO records. These requests for corrected or revised publications must be filed within 2 months from the publication date of the patent application publication. This period is not extendable.

    For more information on EFS, go to http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

  • What are the permissible status identifiers?

    The seven permissible status identifiers set forth in 37 CFR 1.121(c) are: (Original), (Currently amended), (Canceled), (Previously presented), (New), (Not entered), and (Withdrawn). (Withdrawn-currently amended) is also acceptable.

  • When is the application size fee due?

    If the application includes a specification and drawings that together exceed 100 pages, the application size fee is due upon filing of the application. If the required application size fee is not paid on filing, the Office will issue a notice for the fee deficiency. The applicant must pay the required fee prior to the expiration of the time period for reply set forth in the notice to avoid the abandonment of the application.

  • How do I become a registered patent attorney or agent?

    A register of attorneys and agents entitled to represent applicants for patents is maintained by the U.S. Patent and Trademark Office (USPTO). General Requirements for Admission to the Examination for Registration to Practice in Patent Cases Before the U.S. Patent and Trademark Office booklet describes the requirements for registration as an attorney or agent. It includes the application for registration to practice before the USPTO, requirements for admission to the examination, a description of the exam content, the deadline for filing, and a list of the cities where the exam is given. You may visit the USPTO's Office of Enrollment and Discipline Web site at http://www.uspto.gov/go/oed.

  • If an after-final amendment is non-compliant, how should the Office treat the amendment?

    If the after-final amendment does not place the application in condition for allowance, the examiner should provide reasons for non-entry (e.g., the proposed amendment raises new issues that would require further consideration and/or search) in an advisory action. Furthermore, the examiner should also indicate in the advisory action the sections of the amendment that are non-compliant and the reasons why the amendment fails to comply with 37 CFR 1.121. The examiner may attach a Notice of Non-Compliant Amendment to the advisory action.

    The time period continues to run from the mailing of the final Office action. No new time period is provided to correct the non-compliance. If time remains in the time period for reply set forth in the final Office action, applicants may resubmit the entire corrected after-final amendment within the time period set forth in the final Office action accompanied by the appropriate extension of time fee, if required.

  • How much is the extension of time fee that would be required for extending five months beyond the two-month time period for reply set forth in a preexamination notice if the payment is made on or after December 8, 2004?

    35 U.S.C. 41(a)(8) as revised by the CAA provides that the fees for petitions for extensions of time to take actions required by the Director in an application are as follows: on filing a first petition, $ 120; on filing a second petition, $330; on filing a third or subsequent petition, $570. Therefore, $2,160.00 ($120 + $330 + $570 + $570+ $570 = $2,160.00) is due for extending five months beyond the set time period ($1,080.00 for a small entity).

  • Applications filed on or after 11/29/00 will be published by the USPTO 18 months after the earliest filing date claimed under title 35 U.S.C., unless the applicant requests an earlier publication or the applicant requests that the application not be published. The patent rights allow for a reasonable royalty from the date of publication to the date of issuance. Can I request that my application be published even though I filed before 11/29/00?

    Yes, provided that the application is pending on November 29, 2000 and your request complies with 37 CFR 1.211. The right to reasonable royalties is subject to a number of conditions: e.g., (1) actual notice of the published application must be given; and (2) the patent claims must be substantially identical to the claims in the published application.

  • A pro se inventor calls to arrange an interview and wants to bring a 3-dimensional model and a video. How should the examiner treat this request?

    The inventor should be advised that a model or exhibit should not be shown to the examiner unless it is made of record. Since 3-D models and videos do not comply with requirement of 37 CFR 1.91(a)(1) of conformance with 37 CFR 1.84, they cannot be made of record pursuant to 37 CFR 1.91(c) unless the model or exhibit is accompanied by photographs that show multiple views of the material features of the model or exhibit that substantially conform to 37 CFR 1.52 or 37 CFR 1.84, or screen shots of the video that show its material features. Accordingly, the inventor should be advised to also bring photographs or screen shots of the model or video so that the model or video can be made of record. Absent the ability to make of record the model or video, the examiner may not view the model or video, even for background information. The examiner need not retain the 3-D model or exhibit in an artifact file and should request applicant to take them at the end of the interview or the examiner may dispose of them. The photographs or screen shots will be retained by the Office.

    Thus, the best practice is, when an examiner receives an inquiry as to whether a practitioner/applicant can come in for an interview, that the examiner should inquire as to the purpose of the interview. If the interview is for the purpose of showing an exhibit or model, then the attorney must be told that the 3-D exhibit or model may only be shown if it is made of record by compliance with 37 CFR 1.91(c), which should occur prior to the date of the interview.

  • If a party to a joint research agreement (JRA) made an invention after the effective date of the JRA and within the scope of a JRA, must applicant amend the application claiming that invention to disclose the JRA if benefit under the CREATE Act is not invoked?

    Applicant need not provide a disclosure of the JRA ( e.g. , by making an amendment to the specification as set forth in 1.71(g)(1)) if the applicant is not invoking the benefit of the CREATE Act. Even though the disclosure of the JRA itself is not required, applicant must still disclosure material prior art in compliance with 37 CFR 1.56, including prior art that could be avoided by invoking the CREATE Act.

  • Can applicant submit a request for reissuance of an Office action on the last day of the six-month statutory time period for reply to the Office action?

    No. If applicant submits a request for reissuance on the last day of the six-month statutory time period for reply to the Office action, the Office would not be able to reissue (e.g., remail) the Office action on that same day. Applicants must submit any request for reissuance of an Office action in sufficient time for the Office to withdraw and reissue the Office action prior to expiration of the statutory time period (as permitted to be extended under 37 CFR 1.136(a)). If the Office does not reissue the Office action prior to the expiration of the six-month statutory time period, the application would be abandoned by operation of law.

  • If applicant files a request for continued examination under 37 CFR 1.114 on or after December 8, 2004, would the revised basic filing fee, the search fee, and the examination fee be required?

    No, the fee for filing a request for continued examination (RCE) under 37 CFR 1.114 remains the same at $790.00 ($395.00 for a small entity) as set forth in 37 CFR 1.17(e). No search and examination fees are required when applicant files an RCE because an RCE is not a filing of a new application. The revised basic filing fee (e.g., $300 for a utility application) does not apply to an RCE. Also, note that the fee for an RCE must be paid at the time of filing the RCE.

  • I filed a nonpublication request with the application on filing, but the filing receipt shows a projected publication date. What should I do?

    Applicant should first check the Office's electronic application file (IFW) via private PAIR to see if the nonpublication request (which must be conspicuous and include a proper certification) is present. If the conspicuous nonpublication request is actually present somewhere in the Office's file but it was improperly not recognized, applicant should contact the Office of Pre-Grant Publication at (703) 605-4283. If the Office's file does not contain the nonpublication request and applicant has evidence (e.g., an itemized post card receipt showing the request and the "Office Date" stamp) that a proper nonpublication request was filed with the Office, applicant should contact the Office of Pre-Grant Publication and file a request for corrected filing receipt accompanied by the evidence and a copy of the nonpublication request.

    Once the Office verifies that the nonpublication request was properly filed and it was improperly processed, the Office will withdraw the application from the publication process if there is sufficient time to remove it (e.g., at least 4 weeks prior to the projected publication date shown on the filing receipt). Thus, it is important for applicant to promptly check the filing receipt and notify the Office of Pre-Grant Publication of any improperly processed nonpublication request.

  • A handwritten signature is scanned into a computer, subsequently a reply to an Office action is drafted, a button is hit on the computer to insert the scanned handwritten signature into the reply. Is the signature a copy of a handwritten signature that is permitted under 37 CFR 1.4(d)(1), or is it an S-signature under 37 CFR 1.4(d)(2) that must comply with the requirements for slash marks, printed or typed name, and registration number?

    The signature is an S-signature, not a handwritten signature. While the signature was created by hand, it was not inserted into the document by hand and is therefore not a handwritten signature. The "copy" language in 37 CFR 1.4(d)(1) refers to copies of a signed document, not a copy of a signature inserted into a document. While the scanned electronically inserted signature would appear to be a handwritten signature when the document is printed, it has been noted in the preamble discussion of the rule making that "signature replication or transfer means ... appears to be a handwritten signature, but is not actually handwritten, and would therefore be treated under 37 CFR 1.4(d)(2)" (69 Fed. Reg. at page 56484, middle col.). A scanned image of (a document that contains) a handwritten signature, such as an executed § 1.63 oath or declaration, filed via the Office's EFS is permitted as a copy under 37 CFR 1.4(d)(1)(ii). Id.

  • What are the requirements for submitting replacement or new drawings?

    Applicant must submit any amendments to drawings as replacement or new drawings accompanied by explanations of the changes in either the drawing amendment section or remarks section of the amendment paper. Any replacement sheets of drawings must be labeled as "Replacement Sheet" and any new sheets of drawings must be labeled as "New Sheet" in the header. The brief and detailed description of drawings should also be amended to be consistent with the changes to the drawings.

  • If applicant filed a provisional application with claims in excess of twenty and did not pay the excess claims fees, can a later-filed nonprovisional application claim the benefit of the provisional application?

    Yes, a nonprovisional application (other than for a design patent) may claim the benefit of the prior filed provisional application in compliance with 37 CFR 1.78(a) (e.g., the prior-filed provisional application must be entitled to a filing date as set forth in 37 CFR 1.53(c), and the basic filing fee must be paid within the time period set forth in 37 CFR 1.53(g)).

  • Applicant filed an application with a claim for the benefit of an earlier copending nonprovisional application. The benefit claim was filed within four months from the actual filing date of the application, but omitted the relationship between the applications. If applicant wants to add the relationship after the four month period would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required?

    Yes, if a benefit claim is submitted without the specific relationship between the nonprovisional applications, and the specific relationship between the nonprovisional applications is subsequently submitted after the expiration of the period, a petition and the surcharge would be required because the Office cannot enter the benefit claim without the relationship between the applications. See Claiming the Benefit of a Prior-Filed Application under 35 U.S.C. 119(e), 120, 121, and 365(c), 1268 Off. Gaz. Patent Office 89 (March 18, 2003).

  • How do you judge the existence of clear intent to incorporate by reference where the root words are not initially present so as to permit their later insertion?

    In the same manner as prior to the rule change. It is a judgement call made on a case by case basis. Some language, such as a mere reference, would not be sufficient (as in a priority of C11, while other language going further than a mere reference may be sufficient.

  • Must the subject matter that is sought to be disqualified under 35 U.S.C. 103(c) be made on or after the execution of the joint research agreement or within the scope of the joint research agreement?

    No, only the claimed invention that is seeking benefit of the CREATE Act must be made on or after the execution of the joint research agreement and within the scope of the joint research agreement. The subject matter, which is sought to be disqualified, may have a prior art date prior to the execution of the joint research agreement or may not be within the scope of the joint research agreement.

  • How can an applicant obtain copies of cited U.S. patent references if they do not have access to the Internet?

    If an applicant or a practitioner chooses not to print copies of U.S. patents and patent applications publications through the USPTO Patents on the Web system or through the E-Patent Reference system, commercial sources that provide patents very quickly and inexpensively are available, and copies of U.S. patents and patent application publications are also available at the Patent and Trademark Depository Libraries (PTDLs). A listing of PTDLs is located on the USPTO web site athttp://www.uspto.gov/web/offices/ac/ido/ptdl/ptdlib_1.html . Additionally, the cost of patents if ordered from the USPTO Office of Public Records is very reasonable ($3). For more information, see "USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies," 1282 OG 109 (May 18, 2004).http://www.uspto.gov/web/offices/com/sol/og/2004/week20/pataces.htm .

  • An application for patent term adjustment cannot be filed before a Notice of Allowance has been mailed. If a contents error is noted in the Office Patent Application Location and Monitoring (PALM) records when they are viewed using the Patent Application Information Retrieval system (PAIR), who should I contact to have these records corrected?

    If the error is a contents entry other than the filing date of an application, including a Continued Prosecution Application (CPA), contact the Customer Service Representative (Representative) for the Technology Center (TC) where your application is assigned. If you are alleging that the date shown in PAIR is an incorrect date, then the Representative may need documentary evidence (e.g., an Express Mail label or a post card receipt) showing that the paper was received on a certain date. Note that the certificate of mailing date (which may be relied upon for timely filing purposes) is not retained in the USPTO PALM records, and that the date a paper is received is the date that the USPTO actually received the papers, unless the paper was filed using Express Mail under 37 CFR 1.10. The Representative will obtain the application file wrapper and determine whether there is an error in the USPTO's records. If there is a date error, the records will be corrected.

    If the error is in the filing date of an application, including a CPA, a filing date petition is required. Contact the Office of Petitions by telephone at (703)305-9285 or by fax at (703)308-6916 for further information. If a telephone call is made to correct an Office PALM record, other than correcting such an error, no entries are made in PALM (the computer system used to calculate the Patent Term Adjustment), and there would be no reduction to any patent term adjustment. Note a reduction may apply if applicant repeatedly calls the customer service center concerning an application making frivolous requests, and the processing of the application is delayed. If applicant submits a letter with documentary evidence requesting that the Office PALM records be corrected, this letter is matched with the application, and the letter should be entered in PALM. Such a letter would generally not cause a reduction in PTA, however, if applicant were to repeatedly ask for the date to be changed to the certificate of mailing date, or any other improper date, or file such a letter after allowance, the PTA would be reduced under 37 CFR 1.704(a). There is no fee if the above procedure is followed. The above procedure (of contacting the Customer Service Representative) is not permitted after a notice of allowance has been mailed because the application is forwarded to the Office of Patent Publication after allowance, and thus is not readily available to the TCs. In addition, after a notice of allowance has been mailed, an application for patent term adjustment (and the fee) must be filed to have Office records corrected if the change results in a need to recalculate the patent term adjustment. See 37 CFR 1.705(b).

  • Where a preliminary amendment is filed subsequent to the filing date of the application, and it contains subject matter not otherwise supported by the specification, would the Office still treat the preliminary amendment as containing new matter and issue the appropriate rejection/objection?

    Yes.

  • I received a filing receipt with a projected publication date, and I don't think that the application should be published, what should I do?

    If you do not think that you should have received a projected publication date because you filed a request for continued examination (RCE) or because the filing date of the application is before November 29, 2000, contact the Technology Center where your application is assigned and ask for the Customer Service Representative. The Representative can have the problem corrected.

  • Applicant filed an application with a claim for the benefit of a prior-filed U.S. application on filing but the reference to the prior-filed U.S. application is included in the transmittal letter or a § 1.63 oath/declaration, rather than either in the first sentence(s) of the specification (including an amendment to the first sentence(s) of the specification), or an application data sheet pursuant to § 1.76. If all the other requirements of 35 U.S.C. 120 and 37 CFR 1.78 are met, would the benefit claim be considered an incorporation by reference as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that applicant would be able to amend the application to include the inadvertently omitted material (notwithstanding the failure to place the benefit claim in the first sentence(s) of the specification or an ADS)?

    No. 37 CFR 1.57(a) requires that a claim under 37 CFR 1.78 to a prior-filed nonprovisional, provisional, or international application must have been present on the filing date of the application in order for the benefit claim to be considered an incorporation by reference of the prior-filed application as to inadvertently omitted material. 37 CFR 1.78 additionally requires that the reference to the prior-filed application must be in the first sentence(s) of the specification, or in an application data sheet. Accordingly, a benefit claim under 37 CFR 1.78 was not present on the date the application was filed as required by § 1.57(a).

  • Is the USPTO publishing the national stage (35 U.S.C. 371) of an international application under the eighteen month publication provisions (35 U.S.C. 122(b))?

    Yes.

  • If the supplemental reply is not limited to one of the situations listed in 37 CFR 1.111(a)(2)(i), can the examiner enter the supplemental reply?

    Yes, the examiner has the discretion to enter any supplemental reply that is in compliance with 37 CFR 1.121, even if the reply adds more claims or includes an affidavit. For example, if the first reply includes an unsigned declaration and applicant subsequently files a signed declaration in a supplemental reply, the examiner should enter such supplemental reply if it is matched with the application before the examiner finishes the next action.

  • Do reissue applications get published under 35 U.S.C. 122(b)?

    No, they are published with a notice in the Official Gazette - Patents, stating that the application has been filed. Reissue applications are open to public inspection. See 37 CFR 1.11(b). If you receive a filing receipt for a reissue application and the filing receipt has a projected publication date, contact the Customer Service Representative where your application is assigned. They can have the application withdrawn from publication under 35 U.S.C. 122(b).

  • Can the changes in 37 CFR 1.105 be applied to applications pending before the October 21, 2004 effective date of the rule change?

    Yes. The rule is only illustrative of the general ability of examiners to question applicants in appropriate circumstances and the amendment to the rule did not establish a new right.

  • How do I request an early publication after I have submitted my application?

    Any request for an early publication must be accompanied by the publication fee set forth in 37 CFR 1.18(d) (currently $300). The applicant must submit a copy of the application in compliance with the Electronic Filing System (EFS) requirements in 37 CFR 1.215(c) or the USPTO will publish the application as provided in 37 CFR 1.215(a). If the EFS requirements are not met, the application will be published, in general, as originally filed. No consideration will be given to requests for publication on a certain date. Such requests will be treated as a request for publication as soon as possible.

  • Can applicant use "allowed" as the status identifier for claims that are previously indicated allowable by the examiner?

    No, applicant must use one of the permissible status identifiers. See question A1. If the claims that are indicated as allowable are not being amended in the current amendment, applicant may use either (original) or (previously presented), whichever is appropriate.

  • For the purpose of determining the amount of application size fee due, would the Office count the sheets of paper making up a preliminary amendment present on the filing date that only cancels claims?

    Yes, the Office will count the pages of any preliminary amendment present on the filing date of the application even if the amendment only cancels claims. For example, if the preliminary amendment includes a transmittal letter that is on one sheet of paper and a complete claim listing that is on ten sheets of paper, the Office will count the ten sheets of paper when determining the amount of application size fee due in addition to the pages of the original claim listing.

  • Can an improper S-signature (i.e., no forward slashes, or only one slash) be fixed by an Examiner's Amendment?

    No, an improper signature cannot be ratified by use of an Examiner's Amendment or by the use of any other type of Office action. This is because ratification must be accomplished by the submission of a paper by the appropriate party ratifying (confirming/approving) the previous improper signature. MPEP 714.01(a). See also Questions and Answers regarding the rules for Power of Attorney practice located at: http://www.uspto.gov/web/offices/pac/dapp/poafaqs.htm.

  • Can a reference available as prior art under the amended 35 U.S.C. 102(e) be disqualified under 35 U.S.C. 103(c) if such reference is used in a 103(a) rejection?

    Yes, the Technical Amendments Act (Pub. L. 107-273) did not amend 35 U.S.C. 103(c).

  • If applicant files: (1) a continuation application including the set of claims of the parent application, and (2) an accompanying preliminary amendment that cancels all of the claims and presents a new set of claims, should the applicant use the status identifier, (original), for the claims added by the preliminary amendment?

    No, applicant must not use the status identifier, (original), for claims added by a preliminary amendment, even if the preliminary amendment is present on the filing date of the application and it is filed on or after October 21, 2004, the effective date of the changes to 37 CFR 1.115. Any new claims added by an amendment, including a preliminary amendment, must have the status identifier, (new). If applicant files a subsequent amendment, applicant must use the status identifier "previously presented" if the claims added in the preliminary amendment are not being amended, or "currently amended" if the claims added in the preliminary amendment are being amended.

  • When an applicant files a Request for Continued Examination (RCE), will the filing cause the application to be subject to publication?

    The filing of an RCE on or after 11/29/00 has no impact on publication of the application. The application will be published or not published based on the application filing date. If the application is filed before 11/29/00 (and no CPA has been filed on or after 11/29/00), the application will not be published. If the application (including a CPA) has been filed on or after 11/29/00, the application will be published. A filing of an improper CPA that has been treated as an RCE also has no impact on publication of the application.

  • A prior art citation list is submitted where applicant has chosen not to make use of the Office's PTO/SB/08A or 08B forms for citing prior art, but instead used an outdated form that does not provide the required separate sections for citation of U.S. patents and U.S. patent publications, or a column that provides a space next to each citation for the examiner's initials, or a heading that clearly indicates that the citation list is an IDS. What is the examiner's obligation to review the citations that are not submitted in a format compliant with the rule?

    The examiner need not review any citation that does not comply with the content requirements of 37 CFR 1.98, but must inform applicant in the next Office action of any citation that was not reviewed, and should draw a line through each such citation, or through the entire IDS listing. Alternatively, the examiner may choose to review such citations and list such citations on a PTO-892 form. The examiner may not "fix" applicant's citation list by attempting to add the missing format requirements. If the examiner does not review the citations, the examiner must inform applicant of the defects in the IDS.

    Note (1): Applicants must discontinue the practice of utilizing a copy of an IDS listing submitted in a prior application that was returned by the Office and was marked up by the examiner, when submitting the same IDS listing in a continuing application. Such IDS listing, even if a PTO/SB/08A or 08B form was used in the prior application, would not comply with the format requirements in a continuing application when a copy thereof is supplied as the previously submitted form has already been marked up by the examiner in the parent application, and therefore, does not provide clean spaces for it to be marked up in the continuing application.

    Note (2): As 37 CFR 1.98(a)(1) does not require a separate section for foreign patents and nonpatent literature, the failure of applicant's form to list the U.S. patents and U.S. patent publications separately would not remove the need for the examiner to review the foreign patents and nonpatent literature, even though their listings were combined with the U.S. patents and U.S. patent publications. In such case, where only the separate listing requirement was not met, the examiner would consider the IDS in part. Of course, where the column or heading requirements were not met, the entire IDS can be refused consideration.

  • Will assignee data be printed on a patent application publication?

    If the applicant would like the assignee data to be published, the information must be provided on the application transmittal letter or the application data sheet (ADS) that was filed with the application. The applicant may also submit the information via PAIR (Bib-data review prior to publication). If the assignee data is recorded with the Assignment branch only, the information will not be published.

  • Can an applicant request a resetting of the time period for filing an appeal brief if a notice of appeal has already been filed?

    The time period for filing an appeal brief is based upon the date a notice of appeal is filed, and not on the date an Office action or other communication is mailed. An applicant may file a petition under 37 CFR 1.136(b) (accompanied by the $200.00 petition fee) if additional time to file an appeal brief is needed due to the effects of the earthquake and/or tsunami of March 11, 2011.

  • What is the basic filing fee for a provisional application filed before December 8, 2004, the effective date of the Consolidated Appropriations Act, if the applicant is paying the provisional basic filing fee on or after December 8, 2004?

    The revised provisional basic filing fee, $200.00 ($100.00 for a small entity), applies to provisional applications filed before December 8, 2004 if the provisional basic filing fee is paid on or after December 8, 2004. The application size fee, however, is not required in a provisional application filed before December 8, 2004.

  • I received a "Notice of Allowance and Fee(s) Due" requiring a publication fee. I have the following questions regarding the publication fee. If I pay the publication fee, but the patent issued and the application has not published, where should I mail the refund request?

    The refund request should be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

    Mail Stop PGPUB
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450.

  • Do I need a patent attorney or agent to file my patent application?

    The U.S. Patent and Trademark Office (USPTO) strongly recommends that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications. For information on registered patent attorneys and agents in your area, you may visit the USPTO's Office of Enrollment and Discipline Web site at http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm. Upon request, the USPTO will send informational materials providing a broad overview of the process of obtaining a United States patent. They will include general requirements and a listing of the Patent and Trademark Depository Libraries.

  • If an amendment that is not an after-final amendment is non-compliant, how should the Office treat the amendment?

    If a preliminary amendment, supplemental amendment filed a suspension period, or non-final amendment is non-compliant, the technical support staff should review the amendment in its entirety and point out all of the reasons for noncompliance in the Notice of Non-Compliant Amendment to notify the applicant of: (1) which section of the amendment paper is not in compliance with 37 CFR 1.121 (e.g., the amendments to the claims); (2) items that are required for compliance (e.g., a claim listing in compliance with 37 CFR 1.121(c)); and (3) the reasons why the section of the amendment fails to comply with 37 CFR 1.121 (e.g., the status identifiers are missing).

  • A patent includes 6 independent claims and 30 total claims. Applicant filed 7 independent claims and 31 total claims before December 8, 2004 in a reissue application of the patent, and paid the required excess claims fee for the 7th independent claim and the 31st claim.

    (1) If applicant cancels 10 claims, 2 of which are independent, and adds 10 ten claims, 2 of which are independent, on or after December 8, 2004, how much excess claims fees are due?

    No excess claims fee is due because after taking into account the claims that have been canceled, there is no claim in excess of the number of claims (independent or total) previously paid for.

    (2) If applicant cancels 10 claims, 2 of which are independent, and adds 10 claims, 3 of which are independent, on or after December 8, 2004, how much excess claims fees are due?

    The excess claims fee for the 8th independent claim ($200.00) is due.

    (3) If applicant cancels 10 claims, 2 of which are independent, and adds 11 claims, 2 of which are independent, on or after December 8, 2004, how much excess claims fees are due?

    The excess claims fee for the 32nd claim ($50.00) is due.

    (4) If applicant cancels 10 claims, 2 of which are independent, and adds 11 claims, 3 of which are independent, on or after December 8, 2004, how much excess claims fees are due?

    The excess claims fees for the 8th independent claim ($200.00) and the 32nd claim ($50.00) are due.

  • Can applicant add a benefit claim of a prior-filed non-provisional application in a later-filed copending application that has been abandoned without filing a petition to revive the later-filed application?

    Yes, a petition to revive the later-filed application is not required when applicant is adding a benefit claim by filing an amendment (or an application data sheet) to add the specific reference of the prior-filed non-provisional application. A petition under 37 CFR 1.78(a)(3), however, is required if the later-filed application is a utility or plant application filed on or after November 29, 2000. If the later-filed application is a utility or plant application filed before November 29, 2000, a petition under 37 CFR 1.182 is required.

  • The amendment to 37 CFR 1.76(a) requires that an application data sheet contain a specific title "Application Data Sheet" and that all seven headings listed in 37 CFR 1.76(b) be presented with any appropriate data for each heading. An application data sheet is filed containing a proper foreign priority claim pursuant to 37 CFR 1.76(b)(6). The application data sheet, however, either fails to contain the required specific title for the ADS (37 CFR 1.76(a)), or the domestic priority information heading of 37 CFR 1.76(b)(5) is not provided because domestic priority is not being claimed. Does either failure in a formality requirement in the application data sheet that is unrelated to the foreign priority claim affect the effectiveness of the properly presented foreign priority claim?

    No, but the application data sheet would be improper due to either of the unrelated informalities. The application data sheet informality would need to be corrected by submission of a corrected application data sheet with either: the correct title, or the domestic priority heading. Alternative to submission of a corrected application data sheet, applicant need not continue to rely on the application data sheet by correcting either informality, but provide for identification of the foreign application in an oath or declaration as required by 37 CFR 1.63(c)(2).

    Additionally, if the application data sheet had been filed along with the application papers, 37 CFR 1.57(a) would be available to incorporate from the foreign priority application any material inadvertently omitted from the U.S. application.

  • After the applicant disqualifies a reference based on a joint research agreement, can the patent examiner make the next Office action final if it contains a subsequent new double patenting rejection based upon the disqualified prior art?

    Yes, the Office action can be made final (provided that no other new ground of rejection that was not necessitated by amendment is introduced) regardless of whether the claims themselves have been amended.

  • When does the three month period for requesting a refund under 37 CFR 1.28(a) start if the fee paper was filed using a Certificate of Mailing under 37 CFR 1.8 or filed by Express Mail under 37 CFR 1.10?

    The three month period for requesting a refund under 37 CFR 1.28(a) starts on the date that a full fee has been paid. Payment by authorization to charge a deposit account is treated for refund purposes the same as payments by other means (e.g., check or credit card authorization), with each being treated as paid (for refund purposes) on the date of receipt in the Office as defined by 37 CFR 1.6. If a payment is mailed with a Certificate of Mailing under 37 CFR 1.8, the three month period for requesting a refund will start on the actual date of receipt in the Office, not the Certificate of Mailing date. If a payment is filed by Express Mail under 37 CFR 1.10, the date of deposit with the United States Postal Service (shown by the ‚"date-in‚" on the Express Mail mailing label or other official USPS notation) is the date of receipt of the payment and the three month period starts on this date.

  • In order to request reissuance of an Office communication pursuant to the OG notice does the Office communication need to have been outstanding on March 11, 2011?

    Yes.

  • If an application filed under 35 USC 111(a) does not include the basic filing fee, search fee or examination fee on filing, would the applicant be given an opportunity to pay later? Would a surcharge be required?

    Yes, the Office will continue the practice under 37 CFR 1.53(f). Applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and the examination fee. Effective July 1, 2005, the surcharge set forth in 37 CFR 1.16(f) is also required if the search fee or examination fee is missing upon filing of an application under 35 USC 111(a) filed on or after July 1, 2005. See Changes to the Practice for Handling Patent Application Filed Without the Appropriate Fees, 70 Fed. Reg. 30360, May 26, 2005 (final rule). Therefore, for applications under 35 USC 111(a) filed before July 1, 2005, the surcharge is required to be paid within the time period set forth in the notice if the basic filing fee or an executed oath or declaration is missing upon filing. For applications under 35 USC 111(a) filed on or after July 1, 2005, the surcharge is required if one of the following items is missing upon filing: the basic filing fee or an executed oath or declaration, the search fee, or the examination fee.

  • Is there a mechanism by which the USPTO intends to assess whether or not any foreign filings have been made contrary to the certification provided by the applicant under 35 USC 22(b)(2)(B)(i), and whether or not the notice requirements of section 122(b)(2)(iii) have subsequently been met?

    The Office does not have any current plans to routinely monitor compliance with either the certification or notice requirements of 35 USC 122(b)(2). Applicants are advised that the Office's failure to note that an application has gone abandoned as a matter of law for failing to provide the proper notice has no effect on the abandoned status of the application (will not operate to prevent the abandonment of the application), regardless of any indication of allowability from the Office.

  • Applicant failed to claim the benefit of a prior-filed application under 35 U.S.C. 120, 121, or 365(c) in a later-filed original application, which issued as a patent. Applicant subsequently filed a reissue application to correct the patent by adding a claim for the benefit of the prior-filed application. Would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required?

    A petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) would not be required if the application for the original patent was one of the categories of applications set forth in 37 CFR 1.78(a)(2)(ii)(A)-(C) (i.e., an application for a design patent; an application filed under 35 U.S.C. 111(a) before November 29, 2000; or a nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000).

    Example 1: A petition and the surcharge set forth in 37 CFR 1.17(t) would not be required if the original application was a utility application filed under 35 U.S.C. 111(a) before November 29, 2000, even if the reissue application was filed on or after November 29, 2000 and the benefit claim was not made within four months of the filing date of the reissue application.

    Example 2: A petition and the surcharge set forth in 37 CFR 1.17(t), however, would be required if the original application was a utility application filed under 35 U.S.C. 111(a) on or after November 29, 2000 without a benefit claim being made in the original application, even if the benefit claim was filed upon the filing of the reissue application.

    If a benefit claim is accepted and the petition under 37 CFR 1.78(a)(3) is granted in the reissue application, a further petition under 37 CFR 1.78(a)(3) and the surcharge for adding the benefit claim to the patent would not be required in any subsequent application for reissue of the patent. In order to provide a complete record, applicant must file an amendment to add the benefit claim and a copy of the petition and the decision granting the petition, in the subsequent reissue application.

  • A nonprovisional application was filed prior to the effective date of 37 CFR 1.57(a) (i.e., prior to September 21, 2004) and inadvertently omitted a figure of the drawings. The nonprovisional application claimed priority to a foreign application that included the missing figure. The nonprovisional application did not contain an explicit incorporation by reference of the prior-filed foreign application. The missing figure contains matter that is not otherwise contained in the nonprovisional application. A continuation was filed after the effective date of 37 CFR 1.57(a) that also inadvertently omitted the same figure. Can applicant amend the continuation to contain the omitted figure?

    Yes, the figure can be added, but the application must be redesignated as a continuation-in-part application.

  • How did the CREATE Act amend 35 U.S.C. 103(c)?

    Former 35 U.S.C. 103(c) was redesignated as 35 U.S.C. 103(c)(1) with no substantial change to the text. In addition, new subsections 35 U.S.C. 103(c)(2) and (3) were established to create provisions to allow certain prior art to be disqualified under 35 U.S.C. 103(c)(1) based on a joint research agreement.

  • How would the Office treat non-compliant amendments filed in response to an Ex Parte Quayle action?

    Amendments filed in response to a Quayle action are reviewed by technical support staff (TSS). If a reply to a Quayle action is a non-compliant amendment, a notice of non-compliant amendment should be mailed by TSS to the applicant notifying the applicant of the non-compliance. To avoid abandonment of the application, applicant must file an amendment in compliance with 37 CFR 1.121 within one-month or 30 days, whichever is longer, from the mailing of the notice. The time period is extendable under 37 CFR 1.136(a).

    When a corrected amendment is filed in response to the notice, the corrected amendment is forwarded to the examiner to consider the amendment on the merits. The examiner may deny entry of the amendment if the amendment touches the merits of the application (e.g., adding more claims) since the prosecution is closed.

  • Is an application for patent term adjustment under 37 CFR 1.705(c) required to include the fee set forth in 1.18(f) and the fee set forth in 1.18(e) or only the fee set forth in 1.18(f)?

    Both fees. Even an application for term adjustment that is only requesting reinstatement of part of a period of adjustment by showing, in spite of all due care, that the applicant was unable to respond to any rejection, objection, argument or any other request made by the Office within a three-month period starting the date of mailing of the Office action or requirement, is required to pay the fee for an application for term adjustment set forth in 1.18(e) as well as the fee for a due care showing set forth in 1.18(f). In other words, an application under 37 CFR 1.705(c) is also required to comply with 37 CFR 1.705(b).

  • Is a second amendment in an RCE (submitted before the first Office action after filing of the RCE) considered a "Supplemental Reply" and therefore not entered as a matter of right?

    Yes. Where applicant is aware of the need to submit a second amendment when the RCE is filed, a request for suspension under 37 CFR 1.103(c) should be submitted along with the RCE request, in which case the second amendment can be entered as a matter of right during the suspension period pursuant to 37 CFR 1.111(a)(2)(ii).

  • If an applicant wants to publish an amended version of the application when he or she files a CPA, when must the applicant file the EFS version of the amended application for the publication?

    The applicant will have one month from the mailing date of the new filing receipt to file the amended application via EFS. See Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 OG 97 (December 26, 2000).

  • In the past, I have included claim status that indicates how many times a claim has been amended, i.e., "Claim 1 (Twice Amended)." Is it proper to indicate that a claim has been "previously amended twice" or "currently amended for the third time?"

    No, under the revised amendment practice, it would NOT be appropriate to indicate how many times a claim has been amended. Only the following seven status identifiers are permitted: "original", "currently amended", "canceled", "new", "withdrawn", "previously presented", and "not entered".

  • 35 U.S.C. 41(a)(1)(G) as set forth in the Consolidated Appropriation Act provides that any sequence listing or computer program listing filed in an electronic medium as prescribed by the Director will be excluded when determining the amount of application size fee due. What electronic medium is permitted under the exception?

    For the purpose of determining the application size fee, the Office will not count any sequence listing or computer program listing filed: (1) on a compact disc in compliance with 37 CFR 1.52(e), or (2) via the Office electronic filing system (EFS) if the listing is submitted in American Standard Code for Information Interchange (ASCII) text as part of an associated file of the application (see § 1.52(f)). Note: any sequence listing must be filed in compliance with 1.821(c) or (e) and any computer program listing must be filed in compliance with 1.96.

  • What information cannot be corrected through PAIR?

    PAIR should only be used to conform the Office's electronic records with the patent application file. For example, if the originally-submitted oath or declaration was signed by three inventors, but the filing receipt lists two, a request can be made through PAIR to add the inventor. If the originally filed executed declaration named an inventor who should not have been named as an inventor, or did not include someone who should have been included as an inventor, then applicant must file the appropriate papers under 37 CFR 1.48. Similarly, to change the order of the inventors from that shown on the oath or declaration, a petition under 37 CFR 1.182 is required and PAIR is not the appropriate mechanism.

  • An application is filed with only one line of specification, which is a priority claim to a foreign application, and one broad claim. Can applicant subsequently add material from the foreign application and draft claims based on such added material?

    Yes, if the requirements of 37 CFR 1.57(a) are met. Although 37 CFR 1.57(a) provides for the later addition of material from a prior foreign application, the initial absence of the material from the U.S. application must result from inadvertence. The presentation of an amendment to add the subject matter from the foreign application is a certification pursuant to 37 CFR 10.18(b) that the initial omission of such material was due to inadvertence. The Office may inquire as to inadvertence where the record raises an issue in regard thereto. See 69 Fed. Reg. 56481, 56503 at Comment 44 and the Response thereto in the published final rule.

  • Are the 35 U.S.C. 102(e) dates printed on patents issued before May 28, 2002 accurate in view of the amended 35 U.S.C. 102(e)?

    In most situations, the 35 U.S.C. 102(e) dates printed on patents are accurate ( e.g. , a patent issued from the national stage of an international application filed before 11/29/00). In a few situations, the printed 35 U.S.C. 102(e) dates may not be accurate because the 35 U.S.C. 102(e) dates printed on patents are based on the entry date of the national stage and not the international filing date (e.g., a patent issued from the national stage of an international application filed on or after 11/29/00). A US patent issued from an international application filed on or after 11/29/00 may have a 35 U.S.C. 102(e) date as of the international filing date or none under the amended 35 U.S.C. 102(e). See Flowchart I [PDF] .

  • Can the examiner enter an amendment under 37 CFR 1.312 in part, e.g., not enter one of the amended claims?

    No, in IFW, the entire amendment to the claims must be entered as a whole or denied entry.

  • I have sent a request for voluntary publication of an application that was filed before 11/29/00 and was pending on 11/29/00, with the processing fee of $130 and the publication fee of $300, but I didn't submit a copy of the application in compliance with the Office's electronic filing system (EFS) requirements, will the Office refund the publication fee and the processing fee of $130?

    The request is improper, and will not be accepted. The Office will refund the publication fee, but not the processing fee. Should applicant still desire voluntary publication, a new request accompanied by both the publication fee and a second processing fee should be submitted. For more information on the EFS requirements, you may contact the Office's Electronic Business Center at http://www.uspto.gov/ebc/index.html or 800-786-9199 or 703-308-4357.

  • What if the application number of a pending application is the only information supplied in the IDS? Is that treated as a citation only of the specification, claims, and drawings?

    Independent of the Strategic Plan rule making, the Office issued an OG Notice (1287 Off. Gaz. Pat. Office 163 (October 19, 2004)(signed September 21, 2004)) waiving the requirement for a copy of each pending U.S. patent application cited in an IDS, where the application is stored in IFW. Where applicant takes advantage of the waiver and cites to a pending U.S. application without supplying a copy thereof, a proper citation of a pending U.S. application requires only a review of the specification, claims and drawings of the application and not other papers in the pending U.S. application being cited. To obtain review of other papers, such as any IDS filed in the cited pending application, applicant must identify such other papers. Note: continuation applications require review of the prior application and consideration of any IDS considered therein. Where applicant also supplies with the IDS a copy of papers other than the specification, claims and drawings that are part of the pending U.S. application (e.g., IDS submitted therein), the supplied papers must also be reviewed where the citation is a proper citation.

    Where only the application number has been supplied, the citation is not proper and the cited pending U.S. application need not be considered until additional information (inventor and the filing date) is supplied. MPEP 609, III., A(1).

  • What is the deadline for requesting a republication of an application to correct or revise a patent application publication?

    The time period for requesting a republication to correct a material error made by the USPTO without a fee is 2 months from the publication date. If the applicant is willing to provide an EFS copy and pay the $430 republication fee, there is no time limit.

  • If the examiner made a restriction requirement and applicant elected with traverse and filed an amendment to the claims, what status identifiers should be used for the non-elected claims that are being amended, the non-elected claims that are not amended, and new claims that are drawn to the non-elected invention?

    The non-elected claims that are amended must have the status identifier (withdrawn) or (withdrawn-currently amended). The non-elected claims that are not amended must have the status identifier (withdrawn). Any new claims that are drawn to a non-elected invention must have the status identifier (new).

  • Is the surcharge set forth in 37 CFR 1.16(f) or (g) (formerly 37 CFR 1.16(e) and (l), respectively) required if the application size fee is not paid upon filing of the application?

    No, the surcharge set forth in 37 CFR 1.16(f) or (g) does not apply to the application size fee.

  • What is the full title of the act that recently revised 35 U.S.C. 102(e) and 374, and where can I locate a copy of it?

    The Intellectual Property and High Technology Technical Amendments Act of 2002 (Technical Amendments Act), which contains the revisions to 35 U.S.C. 102(e) and 374, is part of the Public Law 107-273 entitled "21st Century Department of Justice Appropriations Authorization Act." The revisions to 35 U.S.C. 102(e) and 374, and the effective date provisions, are in section 13205. The text of the Act can be located at the Library of Congress website at http://thomas.loc.gov/home/thomas.html or the Government Printing Office's website at http://www.access.gpo.gov/nara/publaw/107publ.html .

  • If an after-final amendment that is a non-compliant amendment would otherwise place the application in condition for allowance, can the examiner enter the amendment, correct the non-compliance and allow the application?

    Yes, the examiner may enter the after-final amendment and provide an examiner's amendment to correct the non-compliance.

  • If an applicant filed a utility patent application under 35 USC 111(a) including 25 total claims and 4 independent claims accompanied by a check for $968.00 (the amount due for such an application if filed on October 1, 2004) on December 8, 2004, the effective date of the Consolidated Appropriations Act, 2005 (H.R. 4818), what fees will be due, and will any surcharge be due? The application included only 70 pages of specification and drawings and the applicant did not establish entitlement to small entity status.

    The applicant will owe the following fees on filing:

    1. Basic filing fee: $300.00
    2. Search fee: $500.00
    3. Examination fee: $200.00
    4. Independent claim fee for one extra independent claim: $200.00
    5. Excess claims fees for five additional claims: $250.00

    Total fees due: $1450.00.
    No surcharge would be due since the application was filed on December 8, 2004 and the Office would attribute $300.00 of the $968.00 paid to the filing fee. (Note that effective July 1, 2005, if the search or examination fee (or the basic filing fee or an executed oath or declaration) is missing upon filing, the surcharge would be required.) The Office would mail a notice requiring payment of the balance of $482.00 and any surcharge required. The notice would set a time period for reply, which would be extendable under the current Office practice.

  • I have some questions regarding publication of patent applications. Who can help me?

    For Pre-Grant Publication questions, please contact the PGPub hotline at (703) 605-4283 or PGPub@uspto.gov. The Office of Patent Publication has a help desk that can be reached at (703)305-8283. The Customer Service Representatives in each Technology Center will be able to help you with respect to nonpublication requests and other matters regarding specific applications.

  • Can items of an odorous nature, e.g., perfume or deodorant, be brought in for an interview, even if not susceptible to optical scanning or photographic representation?

    Yes, but only after the party requesting the interview has filed a petition pursuant to 37 CFR 1.91(a)(3) that explains why entry of the perfume or deodorant sample in the file record is necessary to demonstrate patentability and the petition has been granted. (See G1 for a discussion re entry of all exhibits in the record that an examiner reviews). The petition is required for entry of this type of exhibit into the record as the exhibit would be incapable of meeting the requirements of 37 CFR 1.91(c) re 37 CFR 1.52 or 37 CFR 1.84. The exhibit should not be returned as the exhibit cannot otherwise be represented in the record. Where the exhibit is perishable, the exhibit may be disposed of pursuant to 37 CFR 1.94(a) with the examiner adding such descriptive comments to the record as appropriate.

    This answer pertains equally to any exhibit that cannot be adequately presented by visual representations, i.e., exhibits that must be apprehended by one of the senses other than sight to appreciate the significance of the exhibit to the determination of patentability. Other examples would include audio recordings of sounds that are not susceptible to transcription, physical artifacts with textures that may be felt, but not visually perceived, items whose taste or other oral perception is a significant patentable characteristic, and items whose patentable characteristic is the absence of a sensory perceptibility, e.g., lack of smell.

  • What is the easiest way to obtain a copy of the file contents of a published application or a paper within the file?

    The contents of an application published under 35 U.S.C. 122(b) are available electronically over the Internet via the public side of the Patent Application Information Retrieval (PAIR) system, if the application is maintained in the Image File Wrapper (IFW) system.

    A copy of the file contents or a particular paper within the file of an application published under 35 U.S.C. 122(b) may also be requested electronically over the Internet at http://ebiz1.uspto.gov/oems25p/index.html or directly by contacting the Office of Public Records via telephone at the customer service numbers below, via facsimile at (703) 308-9759, or via mail addressed to the United States Patent and Trademark Office, Office of Public Records, P.O. Box 1450 Alexandria, VA 22313-1450. The fee for a copy of a file ($200.00 for the first 400 or fewer pages) is set forth in 37 CFR 1.19(b)(1), the fee for a particular paper ($25.00) is set forth in 37 CFR 1.19(b)(1)(i)(D). No physical access to any paper of a pending published application is permitted. Questions regarding this service should be directed to the Office of Public Records Customer Service Line at (703) 308-9726 or (800) 972-6382. Customer Service staff are available between 8:30 a.m. and 8:00 p.m. US Eastern Standard Time. The After Hours Technical Support Line is: (800) 786-9199. Help using the online ordering system is also available online at http://ebiz1.uspto.gov/vision-service/ShoppingCart_P/ShowHelp .

  • Must the title of the invention appear as a heading on the first page of the specification?

    No. The title of the invention is not required (nor has it been under the previous version of §1.72) to be part of the specification. To the extent that practitioners feel an important identification purpose is served by supplying a title on the specification, it should appear as a heading on the first page of the specification. Alternatively, the title may now be supplied in an application data sheet (§ 1.76).

  • If an applicant previously filed a reply to a final Office action, but the Office has not yet mailed an Advisory Action (or other action in response to the after-final reply), can applicant request a reissuance of the final Office action provided that the six-month statutory time period has not yet expired?

    Applicant should wait until the Office responds to the after-final reply. If applicant is close to the expiration of the six-month statutory time period for reply, then applicant may request that the final Office action be reissued. If the final Office action is reissued, prosecution will remain closed. The previously filed reply will still be considered an after-final reply and will not be entered as a matter of right. The Office would simply be restarting the time period for applicant to take appropriate action in response to the final Office action.

  • If applicant files a continued prosecution application (CPA) under 37 CFR 1.53(d) on or after December 8, 2004 in an original design application, would the revised basic filing fee, the search fee, and the examination fee be required?

    Yes, a CPA under 37 CFR 1.53(d) is a new application. A CPA can only be filed in a design application. The basic filing fee is $200 ($100 for a small entity), the search fee is $100.00 ($50.00 for a small entity), and the examination fee is $130.00 ($65.00 for a small entity) for a CPA filed in an original design application.

  • I filed a nonpublication request and a certification under 35 U.S.C. 122(b)(2)(B)(i) using the USPTO form PTO/SB/35 at the time of filing the U.S. application. At that time, I did not believe that publication was necessary because the invention disclosed in the application was already published in a previously filed corresponding PCT application. Upon further review, however, I now believe that publication of the U.S. application is appropriate because the PCT application is an application under a multilateral international agreement that requires eighteen-month publication.

    1. Do I need to rescind the nonpublication request?
    2. Is the U.S. application abandoned because the certification is improper?
    3. Do I need to file a petition to revive the abandon application due to failure to notify the Office of the PCT application under 37 CFR 1.137(f)?
    4. Is there anything I can do to correct the improper certification so that the validity or enforceability of any patent issuing from the U.S. application is not jeopardized?

    1. Yes. The request to rescind (USPTO form PTO/SB/36) should be filed promptly. Since the PCT application was filed prior to the filing of the U.S. application, the applicant or the representative should not have certified that the invention disclosed in the U.S. application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication. See 35 U.S.C. 122(b)(2)(B)(i). The U.S. application is subject to publication under the eighteen-month publication provisions of AIPA.


    2. The Office will not treat the U.S. application as abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii). The statute only provides for that an application is regarded as abandoned when the applicant fails to notify the Office within 45 days of a subsequently filed application that is directed to the same subject as the invention of the US application in another country, or under a multilateral international agreement, that requires eighteen-month publication. 35 U.S.C. 122(b)(2)(B)(iii) does not apply to the situation when the applicant made an improper certification subsequent to the foreign filing


    3. A petition to revive under 37 CFR 1.137(f) is inappropriate because the application is pending (unless the application is abandoned for other reasons). If a petition to revive under 37 CFR 1.137(f) is filed, the Office will dismiss the petition as inappropriate but retain the petition fee because the Office was required to evaluate the merits of the petition before being able to determine that the petition was not appropriate.


    4. Applicants and their representatives should make sure that the certification is proper before signing and filing it with the Office. While applicants should rescind any improper certification as soon as possible, 35 U.S.C. 122(b)(2)(B)(i)-(iv) does not include any provision for "correction" of an improper certification. Any applicants or their representative, however, who makes a false statement (e.g., an improper certification) may be violating 37 CFR 10.18(b). In addition, such false statements by registered patent practitioners may also violate other Disciplinary Rules, 37 CFR 10.20-10.112. While applicant cannot undo the fact that an improper certification was made in this application, with the filing of the rescission request applicant may explain that the original certification was improper.

  • Can examiners S-sign their office actions?

    No. The S-signature is for the signing of correspondence (e.g., by practitioners and applicants) that will (eventually) be filed in the Office (this includes S-signed papers submitted to a practitioner who will then file such paper in the Office). In contrast, the S-signature option is not available for Office correspondence.

  • Can applicant submit proposed drawing corrections?

    The proposed drawing correction practice has been eliminated. Manual of Patent Examining Procedure (MPEP), Sections 608.02(v) and 608.02(w) previously addressed proposed drawing correction practice, and were revised in revision 2 of the Eighth Edition to reflect the annotated marked up sheet practice. See also Changes To Implement Electronic Maintenance of Official Patent Application Records , 1272 OG 197 (July 29, 2003), 68 Fed. Reg. 38611 (June 30, 2003). (The background for this change was discussed in the Notice of Proposed Rulemaking: "For amending drawing figures (1.121(d)), applicants would be required to submit a replacement figure with the changes made. No pre-approval of proposed changes in red ink will be required. In each situation, an explanation of the changes must be supplied." Changes To Implement Electronic Maintenance of Official Patent Application Records ; Notice of proposed rule making 1269 OG 166 (April 22, 2003), 68 Fed. Reg . 14365 (March 25, 2003).)

    If applicant wishes to make any changes to the drawings, the applicant must submit the replacement drawings that include the desired changes. In addition, applicant may submit, or may be required by the examiner to submit, a marked-up copy of any amended drawing figure, including annotations indicating the changes made.

  • If applicant filed an application with numerous excess claims but failed to pay the excess claim fee(s) prior to December 8, 2004, what actions can the applicant take in place of paying the excess claim fee(s) for all the excess claims?

    The applicant can either: (1) abandon the application in favor of a continuing application, assuming the prior-filed application meets the conditions of 37 CFR 1.78(a)(1) (see MPEP 201.11 for more information on continuing applications); or (2) file a preliminary amendment that is compliant with 37 CFR 1.115 and 1.121 which cancels all or some of the excess claims and pay any excess claim fee(s) that might be due after taking into account the claims that have been canceled by the preliminary amendment.

  • Applicant filed an application with a claim for the benefit of an earlier copending nonprovisional application, Application No. 05/123,455. The benefit claim was filed within four months from the actual filing date of the application, but referenced an incorrect application number (should have been 06/123,456. If applicant wants to correct the application number after the four month period would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required?

    Yes, a petition and the surcharge would be required to correctly identify the prior application number because a benefit claim pursuant to 37 CFR 1.78(a)(2) requires identification of the application number and the Office enters the prior application's application number to schedule the application for publication.

  • A clear intent to incorporate by reference must be initially presented under 37 CFR 1.57(b)(1). Is this requirement contradictory of the incorporation by reference provided in 37 CFR 1.57(a)?

    The presence of a priority or benefit claim on the filing of an application will by itself act to incorporate inadvertently omitted material completely contained in the prior application. Pursuant to 37 CFR 1.57(a), the presence of such priority or benefit claim is a clear expression of an intent to incorporate by reference inadvertently omitted material. For incorporation by reference of essential and nonessential material contained in another document pursuant to 37 CFR1.57(b)-(g) (which is not inadvertently omitted material, but material attempted to be a part of the application and its presence is not triggered by a priority or benefit claim), there also must be an initial intent to clearly incorporate such material, such as by using the root words "incorporate" and "reference." The initial presence of such root words will establish a clear intent to incorporate. In the absence of such root words, there must be present in some other manner a clear initial intent to incorporate the essential or nonessential material to later permit either amendment to add the root words or the physical addition of the material initially attempted to be incorporated.

  • Must the subject matter that is sought to be disqualified under 35 U.S.C. 103(c) be made by or on behalf of the parties to the joint research agreement?

    Yes, the subject matter that is sought to be disqualified must be made by, or on behalf of, at least one of the parties to the joint research agreement.

  • Please indicate when the thirty-day period specified in 37 CFR 1.704(d) begins to run in the following circumstances, and explain the basis of the Office's conclusions (note: 37 CFR 1.704(d) concerns the filing of an IDS in relation to discovery of reference during foreign prosecution of an invention that is also the basis of a U.S. application):

    Example A:
    An applicant based in Chicago, Illinois, directs US counsel to prepare, file and prosecute an application in the United States Patent and Trademark Office. The US counsel subsequently sends the application to foreign counsel for filing and prosecution in foreign jurisdictions. The US counsel directs foreign counsel to provide copies of all communications from the foreign office (by fax or overnight mail) within seven days of receipt thereof, and expressly reserves all decision-making authority as to prosecution of the US and foreign applications.

    On January 5, 2002, a foreign counsel in Germany receives a communication from the European Patent Office that includes a list of citations of patents. On January 8, the foreign counsel, pursuant to the standing instructions of US counsel, sends by overnight mail, a copy of the communication from the EPO. The document is received by US counsel on January 12, 2002. On January 30, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 11, 2002.

    Example B:
    An applicant based in Paris, France, directs French counsel to prepare, file and prosecute an application in the European Patent Office. The EPO application is then sent to US counsel by French counsel to be reviewed, edited and prepared for filing in the United States Patent and Trademark Office. The US counsel works with the French counsel to review the edited application, and then files the US application. The review and editing of the US application also leads the French counsel to amend its EPO application.

    On January 5, 2002, the French counsel receives a search report from the European Patent Office that includes a list of six patents. On January 20, 2002, the US counsel receives from French counsel (by overnight mail) a copy of the communication from the EPO and suggests that the US counsel review the search report and "take appropriate action." On January 25, 2002, the French counsel provides a copy of the search report to the applicant. On January 30, 2002, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 14, 2002.

    Example C:
    An applicant based in Chicago, Illinois, hires US counsel to prepare an application suitable for filing in the United States and the European Patent Office. The US counsel engages a German attorney to assist in the review and editing of the application to take account of issues relevant to EPO practice. The US counsel then reviews the edited application, approves the changes, and files it in the United States. The US counsel then directs the German attorney to file the application in the EPO. During prosecution of the US case, the US counsel receives an office action citing three patents.

    On December 1, 2001, the US counsel sends the three patents to the German attorney for review and appropriate action. On January 5, 2002, the German attorney receives a search report from the EPO that cites the three previously cited patents, plus a fourth patent, designating all as "X" references. On January 15, the German attorney reviews the fourth patent and compares it to the three patents cited in the US prosecution. The German attorney concludes that the fourth patent is duplicative of one of the three patents, and takes no further action.

    On March 1, 2002, during a routine status inquiry, the US counsel is informed of the citation of the fourth patent by the EPO and the decision of the German attorney that the information in the newly cited patent was duplicative of the three patents previously cited by the USPTO. The US counsel also obtains copies of the newly cited patent on this date. On March 5, 2002, the US counsel files an IDS containing the newly cited patent.

    Introduction

    37 CFR 1.704(d) provides that a paper containing only an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10) if it is accompanied by a statement that each item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart application and that this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement.

    The determination of when the thirty day period begins to run is dependent on the role of each entity involved in the prosecution of the US and foreign applications, and the role that each plays (if any) vis- -vis the US application. The inventors, the assignee and the US patent counsel are all individuals designated in 37 CFR 1.56(c). The issue is whether the foreign patent counsel is also an individual designated in 37 CFR 1.56(c).

    37 CFR 1.56(c) provides that individuals associated with the filing or prosecution of a patent application within the meaning of 37 CFR 1.56 are:

    Each inventor named in the application;
    Each attorney or agent who prepares or prosecutes the application; and
    Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.

    Based on these elements of 37 CFR 1.56(c), the following would be the conclusions of the Office in the three examples cited above.

    Answer to Example A:

    The thirty-day period would be calculated from January 12, 2002 . As such, the IDS filed on February 11th would be filed within the thirty-day window in 37 CFR 1.704(d), and thus would not result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

    In this example, the foreign counsel has no substantive role in the prosecution of the US application. The explicitly defined role of the foreign counsel relative to the US counsel in combination with the practice in the described fact pattern removes any potential doubt as to the role of the foreign counsel.

    Answer to Example B:

    The thirty-day period would be calculated from January 5, 2002 . As such, the submission of the IDS would not be received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

    In this example, the USPTO would consider the French counsel to have been a party within the meaning of 37 CFR 1.56(c). The French counsel, based on the above facts, played a material role in the preparation and prosecution of the US application (e.g., counsel drafted the original application, worked with US counsel to amend the application and subsequently amended the EPO application based on the work product produced with US counsel). In addition to the French counsel, the applicant would in any case be a party within the meaning of 37 CFR 1.56(c).

    Answer to Example C:

    The thirty-day period would be calculated from January 5, 2002 . As such, the submission of the IDS would be determined to have not been received, received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

    In this example, the USPTO would consider the participation of the German counsel in the prosecution and decision-making as to the relevance of the newly cited art vis- -vis the previously cited three patents to be a material participation in the US prosecution. As such, the German counsel would be considered by the USPTO to be a party covered by 37 CFR 1.56(c), and as such, would evaluate compliance with 37 CFR 1.704(d) from the date that the foreign counsel first learned of the fourth patent (i.e., the newly cited reference).

  • It has been clarified that where a prior reissue application is not being abandoned, a continuation thereof must identify an error in the reissue declaration that was not being corrected in the prior reissue application. For example, a patent contains two independent claims, one to a pencil lead composition containing volcanic ash in the lead and one to an ink composition containing volcanic ash in the ink. A first reissue is filed to remove the "volcanic ash" from the lead composition and the error is so noted in the reissue declaration. If a continuation reissue is filed to also remove "volcanic ash" from the ink composition and the (same) error is noted in the declaration of the continuation, how could a new error be identified in the continuation?

    The error in the original reissue application should be identified as including volcanic ash in the lead composition, while the error in the continuation should be identified as including volcanic ash in the ink composition. Thus, the two errors, both involving the inclusion of volcanic ash in a composition would be different errors as the errors are directed to what is being claimed and what is being claimed in the original reissue application and the continuation reissue application are different.

  • Is there any information on the United States Patent and Trademark Office Web site regarding automation plans related to Pre-Grant Publication of Applications?

    Yes, please see the Pre-Grant Publication Global Concept of Operations document, posted on the AIPA web page, under the heading "Presentations."

    For more information on publication of patent applications, see Helpful Hints Regarding Publication of Patent Applications , 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

  • What AIPA Forms are available on the USPTO web site?

    Go to http://www.uspto.gov/web/offices/dcom/olia/aipa/forms.htm for the following forms.

    • Complaint Form Regarding Invention Promoter (PTO/2048)
    • Credit Card Payment Form (PTO/2038)
    • Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i) (PTO/SB/35)
    • Request for Continued Examination (RCE) Transmittal(PTO/SB/30)
    • Request for Deferral of Examination Under 37 CFR § 1.103(d) (PTO/SB/37)
    • Request to Rescind Previous Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(ii)(PTO/SB/36)

    Go to http://www.uspto.gov/web/forms/index.xml for these and other USPTO forms. Go to http://www.uspto.gov/web/forms/qas.html for frequently asked questions about USPTO forms.

  • Applicant filed a continuation application with a claim for the benefit of a prior-filed U.S. application on filing, but identified an incorrect application number, application No. 05/123,455, instead of the correct application number, application No. 06/123,455. The incorrect reference in the benefit claim in the continuation is later corrected. Would the benefit claim be considered an incorporation by reference of application No. 06/123,455 (the correct application) as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that applicant would be able to amend the continuation to include the inadvertently omitted material (notwithstanding the use of an incorrect prior application number)?

    No. Applicant must identify the correct prior-filed application number on filing the continuation for the applicant to be permitted to add inadvertently omitted material contained in the prior-filed application to the continuation pursuant to 37 CFR 1.57(a).

  • How are the revisions to 35 U.S.C. 102(e) and 374 in the Technical Amendments Act of 2002 (Pub. L. 107-273) different from the revisions to 35 U.S.C. 102(e) and 374 in the American Inventors Protection Act of 1999?

    The revisions to 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 completely replaced the corresponding AIPA versions and are retroactively effective to the effective date of the AIPA amendments to 35 U.S.C. 102(e) and 374 (November 29, 2000). The following briefly summarizes the major differences:

    1. Revised 35 U.S.C. 102(e) (Pub. L. 107-273) generally accords the same prior art date to references of the same application whether it was published as a US patent, a US patent application publication or a WIPO publication. There are limited situations where the US patent may have a different prior art date under 35 U.S.C. 102(e) than the corresponding US patent application publication or a WIPO publication. For example, when the application is based directly on the national stage (35 U.S.C. 371) of an International Application (IA) filed prior to November 29, 2000, however, the US patent has a different 35 U.S.C. 102(e) date for prior art purposes (the 35 U.S.C. 371 date) than the US application publication or the WIPO publication (no 102(e) date). Under the AIPA (prior to the Technical Amendments Act), a US patent application publication of an application could have a much earlier 35 U.S.C. 102(e) date than the corresponding US patent of that same application. This resulted from that fact that the prior art date under 35 U.S.C. 102(e) for US patent application publications could be the international filing dates (even prior to 11/29/00) if certain conditions were met, but US patents could never be prior art under 35 U.S.C. 102(e) as of the international filing date.
    2. Revised 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 are applicable to all applications under examination, no matter when filed and all US patents under reexamination or being contested. 35 U.S.C. 102(e) and 374 per the AIPA (prior to the Technical Amendments Act) were only applicable to certain applications, e.g., those filed on or after November 29, 2000 or voluntarily published under 35 U.S.C. 122(b).
    3. Revised 35 U.S.C. 102(e) per Pub. L. 107-273 is applicable to all international applications filed on or after 11/29/00 (it does not require national stage entry in the United States). 35 U.S.C. 102(e) per AIPA (prior to Technical Amendments Act) required entry into the national stage in order to be applicable.
  • If the first reply is a non-compliant amendment, can the applicant file an amendment that includes additional changes to the specification, including claims, in response to a notice of non-compliant amendment?

    Yes, the corrected amendment filed in response to a notice of non-compliant amendment can include additional changes and it would not be considered as a supplemental reply.

  • When does the applicant have to pay the publication fee?

    For a voluntary publication, early publication, or republication the applicant must pay the publication fee at the time applicant requests such publication (i.e., at the time of filing the EFS submission). For publication of an application filed on or after November 29, 2000, a notification of the publication fee due will be provided in the Notice of Allowance and Fee(s) Due. If the publication (or issue) fee is not timely paid, the application will be abandoned for failure to reply to the Notice of Allowance.

  • If a reply to a requirement for information states that the information requested is unknown or not readily available, can a newly applied rejection under 35 U.S.C. 112 paragraphs 1 and/or 2 based on such reply be made final?

    No. It may, however, be appropriate in some situations to make a rejection under 35 U.S.C. 112 paragraphs 1 and/or 2 at the time the requirement for information is sent.

  • If I request for an early publication, how soon will the application be published?

    The publication cycle takes approximately 14 - 16 weeks and does not begin until the application is complete and ready for publication (e.g., an executed declaration has been filed and the filing fee has been paid).

  • If the amendment would be compliant other than one incorrect status identifier and the examiner clearly knows the status of the claim, should the amendment be treated as a non-compliant amendment?

    Yes, a notice of noncompliant amendment (37 CFR 1.121) should be mailed to applicant to require correction. If the amendment otherwise places the application in condition for allowance, however, the examiner should correct the status identifier using an examiner's amendment.

  • If the specification and drawings include blank pages to separate sections, will the Office count these blank pages when determining the amount of application size fee due?

    Yes, the Office will use an automatic page counter and will not take out any blank pages that are placed between the pages of the specification and drawings.

  • I received a "Notice of Allowance and Fee(s) Due" requiring a publication fee. I have the following questions regarding the publication fee. I filed a continuation on or after November 29, 2000. The prior application has issued as a patent. Why do I need to pay a publication fee for publication of this application when the parent (which has the same disclosure) has issued as a patent?

    The statute requires all applications to be published, not just applications that do not claim the benefit of any other application and authorizes the USPTO to recover the publication fee when the continuation application is allowed. You must pay the publication fee when the continuation application is allowed because the continuation application has been or will be published, and because a non-publication request was not made on filing in an application that is subject to publication under 35 U.S.C. 122(b).

  • 37 CFR 1.4(d)(2)(i) provides that "the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature." Can a form be created that contains the slash marks (without any signature), or must the person signing the form also insert the slash marks?

    Forms may be created that contain the "/ /" (slash marks) in preparation for a signature to be added by the party actually signing the form. 37 CFR 1.4(d)(2) states in-part that an "S-signature is a signature inserted between forward slash marks ...." 37 CFR 1.4(d)(2)(i) provides in-part that the "S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation ...." The slash marks are not defined as part of the S-signature. The preamble of the final rule states that the "S-signature must be placed between two forward slashes" (69 Fed. Reg. at page 56484, right-hand column, second full paragraph). The slash marks are not the signature but an "indicia manifesting an intent to sign ...." ( id .) Where, however, a party has inserted a signature on a form not containing the slash marks, a slash mark must be placed before and after the signature by the party who signed the form. To summarize, a party placing a typed name on a form without the slash marks does not indicate an intent to sign the form, and the addition of slash marks by another around the typed name would not be proper as it would be changing the intent of the appearance of the typed name on the form.

  • If a reference became material to the patentability of the claims in view of the amended 35 U.S.C. 102(e), could the applicant make a statement under 37 CFR 1.97(e)(2) when submitting such reference in an IDS under 37 CFR 1.97(c) or (d) even though the reference was known to the applicant more than three months before the enactment of the Technical Amendments Act of 2002 that amended 35 U.S.C. 102(e)?

    No, 37 CFR 1.97(e)(2) requires no item of information contained in the IDS was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, no item of information contained in the IDS was known to any individual designated in 37 CFR 1.56(c) more than 3 months prior to the filing of the statement.

  • If applicant wants to file an application with a preliminary amendment that will cancel all of the claims in the original specification and add a new set of claims, can the claim numbers of the claims in the original specification be reused for the claims added by the preliminary amendment?

    No, the original numbering of the claims must be preserved throughout the prosecution in compliance with 37 CFR 1.126. Therefore, the claim listings presented in the preliminary amendment and any subsequent amendment must include the claims in the original specification with the status identifier (canceled), and the new set of (added) claims should start with the next higher claim number.

  • If I filed a RCE on 3/5/01 for an application that was filed before November 29, 2000, do I have to pay a publication fee?

    No, the filing of the RCE does not cause the application to be subject to publication. The applicant should not receive a filing receipt with a projected publication date or a Notice of Publication Fee Due. If applicant receives a filing receipt indicating that the application is projected to be published, applicant should fax the transmittal letter for the RCE and a post card receipt for the RCE to PGPub Division at (703) 305-8568 with an explanation that the application was filed before November 29, 2000 and should not be scheduled for publication. A follow-up phone call should be made to one of the contacts listed in the CAB1 Q&A such as Tammy Koontz at 703-605-4283, Marcia Campbell at 703-305-4322, or Jon Lachel at 703-605-4285. The transmittal letter serves as proof that an RCE not a CPA was filed. If the applicant notifies the Office more than 4 weeks prior to the projected publication date, the application may be removed from publication process, but a later request will not remove the application from publication.

    The applicant should reply to the Notice of Publication Fee Due with the following statement.

    "I request that this notice be vacated as being in error. The application is not subject to publication as the application was not filed on or after November 29, 2000."

  • Can an applicant submit a copy of an examiner's PTO-892 form from a prior application in a continuing application as an IDS submission?

    No. Any form for citations submitted as an IDS must comply with the new 37 CFR 1.98 format requirements, including 37 CFR 1.98(a)(1)(ii) that requires a column that provides a space for the examiner's initials. A PTO-892 form for examiner use would not meet such format requirement.

  • If I file a Continued Prosecution Application (CPA), will the application be subject to publication?

    If the CPA is filed on or after 11/29/00 in an application that is eligible for the CPA practice, the Office will publish the content of the original filed prior application promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code. For example, if the prior application has no benefit claim, the application will be published after 18 months from the filing date of the prior application.

    If the CPA is filed before 11/29/00 or filed in an application that is not eligible for the CPA practice, the application will not be published.

    See questions A18, A19, and A20 for restrictions on the CPA practice, treatment of improper CPA, and the differences between a request for continued examination (RCE) and a CPA.

  • What if applicant needs additional time to take action after a decision by the Board of Patent Appeals and Interferences (BPAI) due to the effects of the earthquake and/or tsunami?

    An applicant may file a request under 37 CFR 1.304(a) to extend the time for filing an appeal or commencing a civil action.

  • What fees are required for international applications entering the national stage under 35 U.S.C. 371 for which the basic national fee was not paid before the effective date of the Consolidated Appropriations Act?

    The following fees are required:

    a. The basic national fee;
    b. The search fee;
    c. The examination fee;
    d. The application size fee for applications whose specification and drawings together exceed 100 pages (excluding any sequence listing or computer program listing submitted in an electronic medium in compliance with § 1.52(e), e.g., compact discs);
    e. The excess claims fee if the application includes more than 3 independent claims, more than 20 total claims, and/or a multiple dependent claim;
    f. The late filing surcharge, if an executed oath or declaration, the search fee, or the examination fee is filed later than the date of the commencement of the national stage pursuant to § 1.495(c); and
    g. The processing fee (§ 1.492(i), formerly § 1.492(f)), for filing an English translation of an international application or of any annexes to an international preliminary examination report later than thirty months after the priority date
    (§§ 1.495(c) and (e)).

  • Can the Patent Office recommend a patent attorney or agent to assist me with filing my application?

    The U.S. Patent and Trademark Office (USPTO) cannot make this choice for you. However, a general attorney may help you in making a selection from among those listed as registered practitioners on the USPTO roster. Also, some bar associations operate lawyer referral services that maintain a list of patent attorneys available to accept new clients. For information on registered patent attorney and agents in your area, you may visit the USPTO's Office of Enrollment and Discipline Web site at www.uspto.gov/go/oed.

  • What time period for reply is set forth in the Notice of Non-Compliant Amendment if the non-compliant amendment is a reply to a non-final Office action?

    For a non-compliant amendment that is a reply to a non-final Office action, the Notice provides a time period of one month or thirty days, whichever is longer, for reply and this time period is extendable under 37 CFR 1.136(a) (e.g., up to five months after the one-month or thirty day time period). If applicant fails to file a reply to the Notice within the time period, the application will be abandoned.

  • If on December 7, 2004 an application with 6 independent claims and 40 total claims was filed, but only the basic filing fee was paid, what fees are due for the additional claims? Assume the application has 400 pages of specification and drawings and that the applicant did not establish entitlement to the small entity discount.

    The revised (higher) excess claims fee amounts apply to any excess claims for which the excess claims fee is paid on or after the date of enactment. Since no excess claim fees were previously paid, the following fees would be due:

    a. Independent claim fee for three extra independent claims: $600.00
    b. Excess claims fee for 20 additional claims: $1000.00

    Total fee due: $1600.00.
    Applicant would not be required to pay the following fees: search fee, examination fee, and application size fee, even though the specification and drawings exceed 100 pages in this application, because the application was filed before the enactment date.

  • Will provisional applications be published under the 18-month publication provisions of AIPA?

    No, provisional applications are not eligible for publication.

  • Can drawings be e-mailed to the Office?

    No. Drawings can be facsimile transmitted (other than for purposes of an application filing date), but not e-mailed to the Office.

  • What are the content requirements for a terminal disclaimer under 37 CFR 1.321(d) to overcome a double patenting rejection based on a joint research agreement?

    The terminal disclaimer must include a provision that the owner of the application or patent waives the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the disqualified patent or any patent granted on the disqualified application. The terminal disclaimer must also provide that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the disqualified patent, or any patent granted on the disqualified application are not separately enforced. Section 1.321(d) does not include a provision that the applicant or patentee agrees that such waiver and agreement shall be binding upon the owner of the rejected application or patent, its successors, or assigns because this is provided for in § 1.321(b).

  • What time period will be provided when the Office grants applicant's request for reissuance of an Office communication? Is the time period that will be provided different from what is set forth in MPEP 710.06?

    The time period that was set in the Office communication will be restarted from the date of the reissuance of that Office communication. For example, if an Office action was mailed that set a three-month shortened statutory period for reply, and the Office grants a request for reissuance of that Office action, the three-month time period running against the application will begin as of the date of the reissuance (e.g., the remailing date). This is different from some of the situations set forth in MPEP 710.06 in which applicant may not be given a new time period equivalent to the previous time period.

  • If applicant filed a utility nonprovisional application under 35 U.S.C. 111(a) prior to December 8, 2004, the effective date of the Consolidated Appropriation Act (CAA), but did not pay the basic filing fee before December 8, 2004, can the applicant pay the revised basic filing fee as set forth in CAA?

    No, the basic filing fee, $790.00 ($395.00 for a small entity), applies to utility nonprovisional applications filed under 35 U.S.C. 111(a) before December 8, 2004. Applicant, however, is not required to pay the search fee, examination fee, and the application size fee.

  • Also, is there a mechanism by which the USPTO intends to provide notice to applicants that their patent applications have been "regarded as abandoned" for having failed to provide notice of foreign filings within 45 days thereof, as required by section 122(b)(2)(iii)?

    The Office does not have any current plans to routinely provide notice to applicant that their patent applications have been "regarded as abandoned." Should the examiner become aware of the foreign filing, e.g., during the prior art search, the examiner does have the authority to formally hold the application abandoned.

  • If applicant fails to file an amendment to add a claim for the benefit of a prior-filed reissue application in a later-filed reissue application within the time period set forth in 37 CFR 1.78(a)(2) (e.g., four months from the actual filing date of the later-filed reissue application or sixteen months from the filing date of the prior-filed reissue application, whichever is later), would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required?

    Yes, a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) would be required if the later-filed reissue application is a utility or plant application filed on or after November 29, 2000, even if the later-filed reissue application is for correcting a patent that issued from an application filed before November 29, 2000. This is because the benefit claim is between the later-filed reissue application and the prior-filed reissue application and the benefit claim of the prior-filed reissue application is not being added to correct a benefit claim in the patent.

  • Same facts as in C9(a), except that the figure was purposely omitted when filing the continuation. Can applicant later add the omitted figure to the continuation pursuant to 37 CFR 1.57(a) in view of the inadvertent omission from the nonprovisional application?

    No. The inadvertent omission must occur in the application for which applicant is trying to invoke 37 CFR 1.57(a). While the omission of the figure was inadvertent for the nonprovisional application, the omission was not inadvertent when the continuation application was filed.

  • What is the effective date of the amendment to 35 U.S.C. 103(c) by the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act)?

    The CREATE Act was enacted on December 10, 2004, and is effective for all patents, including reissued patents, granted on or after the enactment date. In other words, it is effective for all patent applications pending on or after December 10, 2004. The CREATE Act also effectively makes the 1999 amendment to 35 U.S.C. 103(c) applicable to any applications filed prior to November 29, 1999 and were pending on December 10, 2004. The 1999 amendment to 35 U.S.C. 103(c) added certain commonly owned or assigned prior art under 35 U.S.C. 102(e) to the prior art under 35 U.S.C. 102(f) and (g) that can be disqualified under 35 U.S.C. 103(c). For the 1999 amendment, see § 4807 of the American Inventors Protection Act of 1999 ( see Pub. L. 106-113, 113 Stat. 1501, 1501A-591 (1999)).

    Because the CREATE Act applies only to patents granted on or after December 10, 2004, the recapture doctrine may prevent the presentation of claims in reissue applications that had been 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) during the prosecution of the application which resulted in the patent being issued. See H.R. Rep. No. 108-425, at 6-7 (2003). The CREATE Act also applies to all reexamination proceedings in which the patent being reexamined was granted on or after December 10, 2004.

  • How should applicant indicate added text when the character to be added is the greater than (>) or less than (<) symbol in a formula to avoid confusion with the greater than and equal to symbol (>) or the less than and equal to symbol (<)?

    Applicant should delete the whole formula and add the new formula with the desired changes by using double brackets to delete the formula and underlining to add the new formula. For example: [[A + B = C]] A + B > C.

  • When must an application be filed in order for the National Stage of an International Application to be eligible for Patent Term Adjustment (PTA) ?

    The international application must have an international filing date of May 29, 2000 or later. The date on which the international application either complies with 35 USC 371(c) or enters the National Stage is not relevant for determining eligibility for PTA. See section 4405(a) of the AIPA, 35 USC § 363, and 37 CFR § 1.702(f).

  • Does the revision to 37 CFR 1.115 (which makes a preliminary amendment filed with the application a part of the original disclosure of the application) change the way the Office considers a preliminary amendment which contains subject matter not otherwise present in other parts of the disclosure? Please explain.

    Yes. In the past, if the preliminary amendment filed with the application contained subject matter not otherwise present in other parts of the application's disclosure, that amendment should have been treated as containing new matter unless either: the first filed oath or declaration in compliance with 37 CFR 1.63 referred to the preliminary amendment, or a petition, petition fee, new declaration referring to the earlier filed preliminary amendment, and a required surcharge were filed. For applications filed on or after September 21, 2004, a preliminary amendment filed with the application containing subject matter not otherwise present in other parts of the application's disclosure should no longer be treated by the Office as containing new matter. It is applicant's obligation, however, to make a determination of whether the preliminary amendment filed with the application contains material not otherwise present in the disclosure of the application, and, if so, execute a 37 CFR 1.63 oath or declaration referring to such preliminary amendment.

  • How do I file an express abandonment to avoid publication?

    A petition to abandon an application to avoid publication under 37 CFR 1.138(c) and the fee (currently $130) set forth in 37 CFR 1.17(h) may be filed if there is sufficient time (i.e., more than 4 weeks) to permit the appropriate officials to recognize the abandonment and remove the application from the publication process, i.e., the petition must be received by the Office of Patent Publication no later than four weeks before the projected publication date. The petition will not be granted unless the petition and the fee are received more than four weeks prior to the projected date of publication (found on the filing receipt). The petition and the fee (or an authorization to charge the fee to a deposit account) should be mailed to Mail Stop Express Abandonment Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450, or faxed to the Office of Patent Publication, PGPub Division, at (703) 305-8568.

  • What are the requirements for filing a substitute specification?

    When applicants file a substitute specification, the following are required under 37 CFR 1.125: (1) a statement that the substitute specification includes no new matter; (2) a marked-up version of the specification with markings to show all the changes relative to the immediate prior version; and (3) a clean version of the substitute specification.

  • If applicant filed application papers that used such a small font size that the writing is not legible (or single-spaced pages which is not permitted under 37 CFR 1.52(b)(2)(i) or papers with improper margins), and the Office requires a substitute specification (including a new claim listing), will the pages of the substitute specification (and claim listing) be counted for the purpose of determining the amount of application size fee due?

    Yes, if the originally-filed application papers did not comply with 37 CFR 1.52, especially the legibility requirement of 37 CFR 1.52(a)(1)(iv), any papers filed to comply with 37 CFR 1.52(a)(1) will be counted for the purpose of determining the application size fee due, in place of the originally-filed specification and drawings. Applicants are encouraged to submit applications with the appropriate margins, and 12-point font to ensure legibility.

  • Can I add the assignment information to be printed on the patent application publication through PAIR's bibliographic data change request screens?

    Yes. Although applicants may request publication of the name of the assignee of an application (if the assignment has already been recorded or is being submitted for recordation) on the patent application publication by the use of the PAIR system, this does not replace recordation of the assignment documents. The assignment documents should continue to be forwarded with the cover sheet and fee to the Assignment Division. A corrected filing receipt will be mailed to applicant once the request for entry of the assignment has been processed by the Electronic Business Center.

  • An original application and a first continuation are filed prior to the effective date of 37 CFR 1.57(a). A second continuation is filed subsequent to the effective date of § 1.57(a) and after the original application is no longer pending. If the first and second continuations have the same defect as to inadvertently omitted material, can such material that is present in the original application be placed by amendment in the two continuations?

    The inadvertently omitted material cannot be added to the first continuation as it is filed prior to the effective date of 37 CFR 1.57(a). The inadvertently omitted material can be added to the second continuation as it is filed subsequent to the effective date of § 1.57(a). Although the inadvertently omitted material can be added to the second continuation, it would not receive benefit of any date earlier than the filing date of the second continuation because the material added to the second continuation as inadvertently omitted would not be present in the first continuation and the second continuation would therefore actually be a continuation-in-part and not a continuation.

  • Will the 35 U.S.C. 102(e) dates be printed on patents in the future?

    Currently, theres no such plan.

  • How should amendments to drawings filed after allowance be treated?

    Amendments to drawings filed after allowance are entered by the Office of Publications. If such amendment is forwarded to the examiner, the examiner should forward or return the application to the Office of Publications. The examiner should not deny entry of any drawing submission that includes only formal changes.

  • Is there a form for a voluntary publication request?

    Yes, it is created by the use of the Electronic Filing System , which is the only means to request voluntary publication of an application. See 37 CFR 1.221(a).

  • Can prior PTO-1449 forms still be used or should only new PTO form PTO/SB/08 be used?

    The Office encourages only the use of PTO/SB/08 forms as they are kept in compliance with the requirements for IDSs. Applicants, however, are never required to utilize any form supplied by the Office. When applicants choose not to do so, they must, however, comply with the requirements under the rules, such as 37 CFR 1.98. The Office no longer supports 1449 forms and their use is not encouraged.

  • Will the entire application including the corrections or only the corrections be printed in a corrected or revised publication?

    The entire application including the corrections will be published.

  • When an application with several previously filed amendments and an after-final amendment that has been entered is being allowed, which set of claims would be used in printing the patent?

    The claims in the claim listing of the latest amendment (e.g., the after-final amendment) will be used in printing the patent because the claims in the claim listing of the current amendment will replace all prior claim listings and versions of claims in the application. When allowing the application, the examiner should review all of the claims being allowed, including the claims that are not currently amended, to make sure that they comply with all Office requirements and will not produce quality issues or printer queries.

  • What types of applications require the application size fee?

    The application size fee applies to the following applications that include a specification and drawings that together exceed 100 pages (excluding any sequence listing or computer program listing submitted either: (1) in an electronic medium in compliance with § 1.52(e), e.g., compact discs, or (2) via the Office's electronic filing system (EFS) in ASCII text as part of an associated file of the application (see § 1.52(f))):

    (1) Nonprovisional applications filed under 35 U.S.C. 111(a) (including utility, plant, design, and reissue applications) on or after December 8, 2004, the effective date of the Consolidated Appropriations Act;

    (2) Provisional applications filed under 35 U.S.C. 111(b) on or after December 8, 2004; and

    (3) International applications entering the national stage under 35 U.S.C. 371 for which the basic national fee specified in 35 U.S.C. 41 was not paid before December 8, 2004.

  • I have a patent application that was filed prior to November 29, 2000 (or claims benefit or priority to an application filed prior to November 29, 2000). Does the revised 35 U.S.C. 102(e) apply to this patent application?

    Yes. 35 U.S.C. 102(e), as amended by the Technical Amendments Act, must be applied to all patent applications no matter when filed . In other words, the revised statute applies to patent applications filed prior to the effective date of November 29, 2000 as well as to patent applications filed on or after November 29, 2000. Additionally, the revised 35 U.S.C. 102(e) applies to all patents under reexamination or other proceedings challenging the patent. One of the reasons for the Technical Amendments Act was to provide for application of the revised statute to all patent applications, regardless of the filing date, and all patents.

  • If the examiner wants to correct the non-compliance in an after-final amendment and allow the application within the six-month statutory period, can the examiner provide substantive changes in the examiner's amendment?

    Yes, when the after-final amendment substantially places the application in condition for allowance, the examiner may request that the applicant authorize an examiner's amendment to correct the non-compliance along with any other substantive omissions/changes to place the application in condition for allowance if such authorization is provided within the six-month statutory period set forth in the final Office action, and any required extensions of time are authorized.

  • The third maintenance fee and appropriate surcharge to accept that payment during the grace period are paid at 9:00 AM on December 8, 2004 using the Office's Internet Web-based payment system; the President subsequently signed the Consolidated Appropriations Act, 2005 (H.R. 4818) on December 8, 2004, making December 8, 2004 the date of enactment of the new maintenance fees; no additional maintenance fee was paid for the relevant patent on December 8, 2004; and the grace period to pay the maintenance fee expired at midnight on December 8, 2004. Has the patent expired? (Note: the Office's automated system only required/permitted payment of the fees in effect before the enactment).

    Yes, the patent expired for the failure to pay the entire maintenance fee due within the grace period. Since the third maintenance fee was paid on the same day that the third maintenance fee was increased and the revised statutory fee is effective for the entire day, the revised (higher) fee must be paid by midnight that day (December 8, 2004) rather than the lower amount that was paid.

  • How do I request for publication of a redacted copy of an application?

    If the application filed in the USPTO includes description that is more extensive than any previously filed foreign applications, applicant may submit a redacted copy of the US application for publication, eliminating the description of the invention that is not also contained in any of the foreign corresponding applications. The applicant must file the redacted copy of the application using EFS in compliance with 37 CFR 1.217. If the redacted copy of the application does not meet the EFS requirements, the USPTO will publish the application as unredacted. The redacted copy of an application must be submitted within 16 months after the earliest filing date for which a benefit is sought under title 35, USC.

  • Once the examiner in charge of the application no longer needs a model for examination of the application for which it was submitted, adequate photos have been made of record, and applicant does not wish its return, can the examiner simply dispose of the model?

    Yes, the examiner can dispose of the model.

  • When submitting an application though EFS for purposes of having the amended version published, how should the claims be numbered if some of the initial claims have been canceled and new claims have been added?

    The EFS version of the amended application should be filed with claims that are pending in the application (i.e., excluding deleted claims and including new claims). PASAT will automatically renumber the claims in consecutive ascending order.

    For more information on preliminary amendments, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

  • If an applicant previously filed a reply to a final Office action and the Office has mailed an Advisory Action in response to the after-final reply, can the applicant request a reissuance of the final Office action provided that the six-month statutory time period has not yet expired?

    Yes. If the final Office action is reissued, prosecution will remain closed and the previously filed reply will still be considered an after-final reply. The status of the after-final reply will remain as set forth in the Advisory Action. The Office would simply be restarting the time period for applicant to take appropriate action in response to the final Office action.

  • If applicant files a reissue application on or after December 8, 2004, what basic filing fee, search fee, and examination fee are due?

    For any reissue application filed on or after December 8, 2004, the basic filing fee is $300.00 ($150.00 for a small entity), the search fee is $500.00 ($250.00 for a small entity), and the examination fee is $600.00 ($300.00 for a small entity), regardless of whether it is a utility, design, or plant reissue application).

  • How will I know when my patent application has been published?

    Applicant will be mailed a notice with the publication number and publication date. This notice is now being mailed on the publication date.

  • Can inventors use S-signatures?

    Yes, inventors may use an S-signature pursuant to 37 CFR 1.4(d)(2) such as on the oath or declaration under 37 CFR 1.63. The requirements for an S-signature, however, are in addition to and do not substitute for the signature requirements specific to 37 CFR 1.63. Thus, an inventor seeking to S-sign a declaration pursuant to 37 CFR 1.63 must meet the signature requirements of both 37 CFR 1.63 and 37 CFR 1.4(d)(2). Pro se inventors can use S-signatures to sign replies to Office actions.

  • If applicant submits proposed drawing corrections, how should the Office treat such submission?

    If applicant clearly submitted proposed drawing corrections instead of replacement drawings, a notice of non-compliant amendment should be mailed to the applicant notifying the applicant that the label "Replacement Sheet" or "New Sheet" is missing, the practice of submitting proposed drawing corrections has been eliminated, and replacement or new drawing sheets that include the amended or new figures are required. If a replacement sheet of drawings was submitted, the proposed drawing corrections should have been labeled "Annotated Marked-up Drawings" and the notice of non-compliant amendment should require this label.

  • Applicant filed a reissue application before December 8, 2004, with the same number of claims as in the patent. The patent has more than three independent claims and more than twenty total claims. If applicant added one more independent claim in the reissue application by filing an amendment before December 8, 2004, but did not pay for the excess claims fees, how much excess claims fees are required?

    The excess claims fees as set forth in Consolidated Appropriations Act apply to claims that are not paid for prior to December 8, 2004. Since applicant did not pay for the additional independent claim under the former 35 U.S.C. 41 in the reissue application, the excess claims fees, $250.00 ($200.00 plus $50.00) for the additional independent claim are due if the applicant is a non-small entity.

  • Applicant filed a utility application under 35 U.S.C. 111(a) with a foreign priority claim. The applicant identified the correct application number, Canadian Application No. 2,464,964, of the prior foreign application in the priority claim, but referenced an incorrect filing date of the prior application (should have been April 21, 2014 instead of May 21, 2014). If applicant wants to correct the filing date in the priority claim after the time period set forth in 37 CFR 1.55(d) for timely making a foreign priority claim (i.e., more than four months from the actual filing date of the utility application and more than sixteen months from the filing date of the prior foreign application), would a petition under 37 CFR 1.55(e) including a corrected application data sheet and the petition fee be required? 

    Yes, a petition under 37 CFR 1.55(e) including a corrected application data sheet in compliance with 37 CFR 1.76(c) and the petition fee set forth in 37 CFR 1.17(m) would be required because the filing date was incorrect. A foreign priority claim pursuant to 37 CFR 1.55 requires identification of the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), and day, month, and year of its filing.

  • An application is filed improperly incorporating essential material from a pending nonpublished U.S. application. If the pending nonpublished application issues as a patent during prosecution of the application containing the incorporation by reference, is that sufficient to correct the problem - assuming that the patent number is added by amendment?

    Yes.

  • What are the requirements for the statement pursuant to 35 U.S.C. 103(c)(2) to disqualify a reference based on a joint research agreement?

    To overcome a rejection under 35 U.S.C. 103(a) via the CREATE Act, the applicant must provide a statement to the effect that the disqualified subject matter and the claimed invention were made by or on the behalf of parties to a joint research agreement within the meaning of 35 U.S.C. 103(c)(3), that the joint research agreement was in effect on or before the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should be or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). Evidence to support the statement is not required, except in the very rare circumstance that a patent examiner has independent evidence that casts doubt on the accuracy of the statement. Patent examiners should review the statement to make sure all the requirements are present.

  • I have some questions regarding patent term adjustment (PTA). Who can help me?

    Inquiries related to PTA may be directed to the Office of Patent Legal Administration at (571) 272-7702.

  • The requirement in reissue for the physical surrender of the original letters patent (ribbon copy) has been eliminated for all future and pending reissue applications. Where such requirement is the only outstanding requirement, will the Office reissue the patent without need for applicant to reply to such requirement that it is moot in view of the rule change?

    Applicant must timely reply by either: physically surrendering the patent as was required, or by stating that the outstanding requirement is now moot. Failure to timely submit an appropriate reply will cause the application to become abandoned, even where the requirement for physical surrender of the original letters patent is the only outstanding requirement.

  • Will references in a submission under 37 CFR § 1.99 be placed in the application file and forwarded to the examiner if the submission includes explanation or references that are highlighted?

    Section 1.99 provides that a submission by a member of the public of patents or publications relevant to a pending published application will be entered in the application file if the submission complies with the requirements of § 1.99 and the application is still pending when the submission and application file are brought before the examiner. Section 1.99(d) provides that a submission under § 1.99 may not include any explanation of the references, or any other information. The Office will dispose of any explanation or information if included in a submission under § 1.99. To ensure that there is no protest, the Office will review submissions under § 1.99 to determine whether they are limited to patents and publications before the submission is placed in the file of the application and forwarded to the examiner. The submission under § 1.99 will not be placed in the file of the application, if the explanation of the references and any other information included in the submission are integrated in the references and cannot be extracted easily, or if the references are highlighted.

  • When the National Stage of an International Application is entered as to the United States, should the first line of the specification be amended to recite the relationship of the National Stage to the International Application and/or should the language of publication of the International Application by the International Bureau be set forth?

    Neither the relationship of a National Stage application to the International Application, nor the language of publication by the International Bureau should be set forth in the first line of the specification of the National Stage application. An International Application is not a prior application as to the National Stage (they are legally the same application), therefore amended 37 CFR 1.78(a)(2) does not apply.

  • Applicant filed a continuing application with a claim for the benefit of a prior-filed U.S. application present on filing of the continuing application. The benefit claim merely stated that the application was a "continuing" application of the prior-filed application, rather than providing the specific relationship of the applications, i.e., continuation, divisional, or continuation-in-part as required by 37 CFR 1.78(a)(2)(i). If all the other requirements of 35 U.S.C. 120 and 37 CFR 1.78 are met, would the benefit claim be considered an incorporation by reference as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that applicant would be able to amend the continuing application to include the inadvertently omitted material (notwithstanding the failure to set forth a specific relationship)?

    No. Applicant must specify whether the continuing application is a continuation, divisional, or continuation-in-part application in order for the benefit claim to be considered to contain the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78 (See MPEP 201.11) and the specific relationship must be supplied on filing of the continuing application to comply with 37 CFR 1.57(a).

  • Does a Continued Prosecution Application qualify for the new provisions of 35 U.S.C. 103 (c) as specified in Section 4807 of the American Inventors Protection Act?

    Yes, see Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term "Original Application" in the American Inventors Protection Act of 1999, Notice, 1233 OG 54 (April 11, 2000).

  • If a supplemental reply is filed within the period during which action by the Office is suspended and it is a non-compliant amendment, how would such amendment be treated?

    A technical support staff person reviews supplemental amendments filed during a suspension period to determine whether the amendments are in compliance with 37 CFR 1.121. If such a supplemental reply is non-compliant, a notice of non-compliant amendment should be mailed to the applicant. It will provide applicant one-month or 30 days, whichever is longer, to file a corrected amendment. If applicant fails to file a timely corrected amendment in response to the notice, the application will be examined (after the period of suspension) without consideration of the supplemental reply.

  • Where can I find patent application publications?

    When an application is published, the publication will be included on the USPTO home page in the Searchable Patent Databases section (currently http://www.uspto.gov/patft ) and information on the published application will be included on the public side of PAIR (see http://portal.uspto.gov/external/portal/pair ).

  • For an added limitation in an amended specification/claim where the examiner cannot find support for the added limitation in the original specification, should the examiner make a new matter rejection/objection, or use a 37 CFR 1.105 Requirement for Information request?

    The choice may vary depending upon the nature of the circumstances and the state of prosecution. Generally, prosecution would be best advanced by making the rejection rather than the requirement for information. The Requirement for Information may, however, be more useful, for example, if the amendment was a preliminary amendment, which would affect the search that would need to be made and applicant might locate support for the amendment in a large/complicated disclosure. Alternatively, if the application were in condition for allowance except for resolution of this issue, the examiner may simply wish to call applicant to try to resolve the issue rather than make a rejection.

  • What is the Electronic Filing System?

    EFS is the electronic system for submitting patent applications, computer readable format (CRF) biosequence listings, and pre-grant publication submissions to the USPTO via the Internet. It includes:

    • authoring tools to help the applicant prepare a patent specification in XML format;
    • a software package called ePAVE (electronic packaging and validation engine) to assemble the various parts of the application and transmit the application to USPTO over the Internet; and
    • a digital certificate to secure the transmission of the application to the USPTO.

    For more information on EFS, go to http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

  • Do third parties have standing to demand that the Office issue or refuse to issue a certificate of correction?

    No. Third parties do not having standing to demand that the Office issue or refuse to issue a certificate of correction. See Hallmark Card, Inc. v. Lehman, 959 F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C. 1997). The Office is, however, cognizant of the need for the public to have correct information about published patents and may therefore accept information about mistakes in patents from third parties and may issue certificates of correction based upon that information (whether or not it is accompanied by a specific request for issuance of a certificate of correction).

  • How can an applicant reinstate a canceled claim?

    Applicant can reinstate a canceled claim by presenting the text of the canceled claim with any desired changes in a new claim with a new claim number and use the status identifier, (new).

  • If an application includes tables on a compact disc, would the Office count the tables in the calculation of the amount of application size fee due?

    Yes, for the purposes of determining the application size fee, the Office will count each three (3) kilobytes of content submitted on a compact disc as one sheet of paper. See § 1.52(f)(1).

  • I received a Notice of Allowance and Fee(s) Due requiring payment of the publication fee. I, however, forgot to pay the publication fee within the 3-month period for reply set forth in the notice. What do I need to submit to make sure that the application will issue as a patent?

    In this situation, you will need to file a petition to revive an abandoned application for failure to timely pay the publication fee under 37 CFR 1.137(b). See MPEP 711.03(c), pages 700-140 and 700-141 (August 2001). You may use the form PTO/SB/64 [PDF] available on the USPTO web site at http://www.uspto.gov/web/forms/sb0064.pdf [PDF] . The petition must accompanied by: (1) the petition fee as set forth in 37 CFR 1.17(m); (2) the publication fee; a complete reply to the notice (i.e., the issue fee, corrected drawing, etc.); and (3) a statement that the entire delay in filing the reply and/or fee(s) from the due date until the filing of a grantable petition was unintentional. In addition, if a complete reply to the Notice of Allowance was not filed (e.g., if the issue fee was also not paid, and any drawings, declaration, or biological deposit was not filed), then a complete reply to the Notice of Allowance must also be filed. The petition and an authorization to charge the fees to a deposit account or credit card may be faxed to the Office of Petitions (703) 308-6916.

  • Do the signature requirements of 37 CFR 1.4(d) apply to assignments to be recorded pursuant to 37 CFR 3.11 and/or the accompanying cover sheets, pursuant to 37 CFR 3.31?

    The signature requirements of 37 CFR 1.4(d) apply only to the cover sheets, not to the accompanying assignments.

    37 CFR 1.4(a)(1) recites in-part "Correspondence relating to services and facilities of the Office, such as ... transmission of assignments for recording...."

    Hence, 37 CFR 1.4, including the signature requirements of 37 CFR 1.4(d), would apply to a transmission of an assignment for recording, which is directed to the cover sheet, but 37 CFR 1.4 does not require that the accompanying assignment itself be governed by the provisions of 37 CFR 1.4 and in particular the signature provisions of 37 CFR 1.4(d).

    37 CFR 3.31(a)(7) requires that a signature be present on the cover sheet. For assignments filed electronically, specific signature requirements for the cover sheet are set forth in 37 CFR 3.31(a)(7)(i) and (ii). For assignments not filed electronically, the signature requirements for the cover sheet are set forth in 37 CFR 1.4(d)(1) and in-part (d)(2).

    Signature requirements are not set forth by the patent rules for the actual assignments as that is a matter of state law and the recording of the assignment by the Office is merely an administrative act that does not include evaluation of the effectiveness of the document to be recorded as a condition of recording. The Office may, however, in certain situations, such as under 37 CFR 3.71 where an assignee attempts to take action, review the assignment to verify that at least facially the assignment is executed by the party purporting to make the assignment.

    The Office will not review the actual assignment as a condition of recording the assignment to determine if it is signed or meets any other conditions required for it to be an effective instrument. The Office will, however, review an accompanying cover sheet to determine its compliance with the electronic signature requirements of 37 CFR 3.31(a)(7)(i), and other forms of electronic signatures provided for by 37 CFR 3.31(a)(7)(ii), which were implemented by 37 CFR 1.4(d)(2) for certain forms of S-signatures, such as EFS Tag(ged) Image File Format (TIFF) and by 37 CFR 1.4(d)(3) for EFS character coded signatures.

  • If an application has been allowed, but has not yet issued as a patent, and a rejection now can be made using a reference that becomes available as prior art under the amended 35 U.S.C. 102(e), can the examiner withdraw the application from issue?

    Yes, the examiner may withdraw the application from issue with the approval of the Technology Center Director and in accordance with the procedures set forth in section 1308 of the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001).

  • If the transmittal letter of the application includes an amendment to the first sentence of the specification to add a benefit claim, how should such amendment be treated?

    The Office will treat such amendment as a non-compliant amendment by sending applicant a notice of non-compliant amendment. Any preliminary amendment to the specification must be present on a separate sheet. See 37 CFR 1.121(h).

  • I would like to rescind a non-publication request. Where should I direct the papers?

    A request to rescind a previously filed nonpublication request may be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

    Mail Stop PGPUB
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450.

  • Where an IDS, filed at the same time as the application, does not contain the application number as required by 37 CFR 1.98(a)(1)(i), should the IDS be objected to and not treated?

    No. The application at the time of its filing had no application number assigned to it, and therefore, none was required on the IDS.

  • How can I ensure that the bibliographic information for a patent application is printed correctly?

    Use of an Application Data Sheet (ADS) (see http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html and 37 CFR 1.76) assists the Office in identifying the appropriate bibliographic information for a patent application for entry into the Office's computer systems. Since the information reflected on a filing receipt (e.g., title) is used for publishing the patent application, use of an ADS can help to ensure that the patent application is printed correctly. In addition, if the bibliographic information for a patent application (e.g., inventor names and residences, title, assignee, and other information shown on the filing receipt) is incorrect, applicants may submit corrections to the bibliographic information through the Patent Application Information Retrieval (PAIR) system (see the answers to the questions CT1 - CT7 (originally C14 - C19) or request a corrected filing receipt. If the information is submitted more than fourteen weeks before the projected publication date, there should be sufficient time for the information to be corrected before the information is forwarded to the printer (about nine weeks before the projected publication date).

    For more information on PAIR, see Helpful Hints Regarding Publication of Patent Applications , 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

  • Can an applicant request that an Office action (or Office communication) in an application under the Accelerated Examination program be reissued?

    Yes. Of course, applicant must satisfy the requirements set forth in the OG notice. Applicants should keep in mind that if the Office action set a non-extendable time period of one month or thirty days, whichever is longer, applicant must request reissuance of the Office action and the Office must reissue the Office action prior to expiration of this one month (or thirty day) time period. Also, if the request for reissuance is granted, the time period running in the application would be one month or thirty days, whichever is longer, from the date of the reissuance (e.g., the remailing date) and it would not be extendable under 37 CFR 1.136(a).

  • In an international application entering the national stage under 35 U.S.C. 371 for which the basic national fee was not paid before December 8, 2004, the effective date of the Consolidated Appropriations Act, would the search fee (35 U.S.C. 41(d)(1)), the examination fee (35 U.S.C. 41(a)(3)), and the application size fee (35 U.S.C. 41(a)(1)(G)) under the Consolidated Appropriations Act be required?

    Yes, the effective date provisions of the Consolidated Appropriations Act provide that 35 U.S.C. 41(a)(1)(G), 41(a)(3), and 41(d)(1) apply to international applications entering the national stage under 35 U.S.C. 371 for which the basic national fee specified in 35 U.S.C. 41 was not paid before the effective date of the Consolidated Appropriations Act.

  • Does the patent office control the fees charged by the patent attorneys or agents for their services?

    No. This is a matter between you and your patent attorney or agent in which the U.S. Patent and Trademark Office takes no part. To avoid misunderstanding, you may wish to ask for estimate charges for: (a) the search, (b) preparation of the patent application, and (c) U. S. Patent and Trademark Office prosecution.

  • If the reply to a non-final Office action is a non-compliant amendment, can the examiner consider the amendment and treat it on the merits?

    The examiner should not treat a non-compliant amendment on the merits unless the amendment would otherwise place the application in condition for allowance and the non-compliance is minor. For such situation, the examiner may correct the non-compliance using an examiner's amendment, and allow the application. If the amendment does not place the application in condition for allowance, the examiner should ask the technical support staff to send a Notice of Non-Compliant Amendment to the applicant to require a compliant amendment.

  • Do the excess claims fees set forth in CAA apply to the claims presented on or after December 8, 2004 in a reexamination proceeding?

    Yes, the revised excess claims fees apply to claims presented on or after December 8, 2004 during a reexamination proceeding. The excess claims fees apply to all patents, whenever granted, for each independent claim in excess of three and also in excess of the number of independent claims in the patent, or for each claim (whether independent or dependent) in excess of twenty and also in excess of the number of claims in the patent that is presented in a reexamination proceeding on or after December 8, 2004. Note: No excess claims fee was due for any claim presented during a reexamination proceeding before December 8, 2004.

  • Does the American Inventors Protection Act of 1999 address the issue of royalty payments by companies who knowingly violate an invention claimed in a published patent application for infringement that occurs before the patent grant date?

    In the American Inventors Protection Act of 1999 (AIPA) Subtitle E - Domestic Publication of Patent Applications Published Abroad, Section 4504 on Provisional Rights addresses this very issue. By the terms of the AIPA, an eventual patentee will be able to obtain a reasonable royalty from any person, having actual notice, who "infringes" the claimed invention during the period beginning on the date of publication of the application and ending on the date the patent is issued. The right to recover a reasonable royalty is based upon actual notice and is only available if the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

  • What if a faxed drawing is clear but it appears pixilated? Will that copy be used to publish the patent?

    Yes.

  • Who must sign the terminal disclaimer under 37 CFR 1.321(d) to overcome a double patenting rejection based on a joint research agreement?

    If filed in a patent application, the terminal disclaimer must be signed by the applicant, assignee, or an attorney or agent of record, in accordance with 37 CFR 1.321(b)(1). If filed in a reexamination proceeding, the terminal disclaimer must be signed by the patentee, or an attorney or agent of record, in accordance with 37 CFR 1.321(a)(1).

  • Does the applicant need to provide any explanation when filing a request for relief pursuant to the OG notice?

    No. An applicant may simply submit the certification and request form (PTO/SB/425), or a copy of the OG notice, with an indication as to the relief being requested (if it is not clear from the record). Applicants do not have to provide any explanation regarding how or why they are entitled to the requested relief. Applicants should note, however, that any request for relief (either by submitting form PTO/SB/425 or a copy of the notice) is considered a representation that the need for the requested relief is due to the effects of the earthquake and/or tsunami of March 11, 2011. Applicants are reminded that any paper being filed in the Office is considered a certification under 37 CFR 11.18(b). Therefore, applicants must ensure that they are entitled to the relief being requested. The need for the relief being requested must be due to the effects of the earthquake and/or tsunami of March 11, 2011, in Japan.

  • 35 U.S.C. 41(h)(3) (relating to small entity fees) as set forth in the Consolidated Appropriation Act (CAA) provides that the basic filing fee for a utility nonprovisional application is reduced by seventy-five percent if the application is filed by electronic means as prescribed by the Director. What electronic means is permitted for filing an application for the purpose of getting the 75% reduction in the basic filing fee?

    The 75 % reduction applies only to the basic filing fee of an original utility nonprovisional application filed under 35 U.S.C. 111(a) on or after December 8, 2004, in compliance with the Office electronic filing system(EFS) by an applicant who has properly asserted entitlement to small entity status under 37 CFR 1.27(c).

  • If I file a PCT application designating the U.S. and then before the International Bureau publishes the PCT application I abandon the application, may I submit a non-publication request under 37 CFR 1.213 with a filing of a U.S. application under 35 USC 111, that discloses the same subject matter as disclosed in the PCT application?

    No, the mere filing of the PCT application precludes the proper use of a non-publication request, since the invention disclosed in the US application was the subject of an application that was filed under an international agreement requiring publication at 18 months (the PCT). 35 USC 122(b)(2)(B)(i) states that "If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, . . ." The trigger in the statute is not the publication, but rather the trigger is the act of filing in a foreign country that requires publication, or under international agreement that requires publication. Thus 37 CFR 1.213(a)(3) is consistent with the statutory requirement. The statute simply does not allow for abandonment of the foreign application, or application under a multilateral international agreement, prior to foreign publication at 18-months in order to provide for an appropriate request for non-publication in the US application.

  • How does the effective date work in regard to the Strategic Plan rule package?

    The Final Rule had three effective dates (see slide 5 of the training slides, or page 56482 of the Final Rule for a rule by rule breakdown), which dates generally depend upon whether the change was favorable to applicants (immediately effective as of September 21, 2004), favorable to the Office except for fee increases (one month delay until October 21, 2004), or were directed to fee increases (two month delay until November 22, 2004 as November 21, 2004 was a Sunday). While all the effective dates are past, older papers may need to be evaluated as to whether compliance with the amended or prior rules is required.

    Generally, the effective dates apply to the date a particular paper is being submitted and not the filing date of the application in which the paper is filed, with some exceptions, e.g., (1) incorporation by reference pursuant to 37 CFR 1.57(a), whereby inadvertently omitted material can be added only to applications filed on or after September 21, 2004, (2) information disclosure statements pursuant to 37 CFR 1.98, whereby copies of U.S. patents and U.S. patent application publications need not be supplied for applications of any filing date, (3) tables and sequences pursuant to 37 CFR 1.58 and 1.83, whereby duplication thereof is avoided in the specification and the drawings, (4) preliminary amendments pursuant to 37 CFR 1.115, where preliminary amendments filed with the application are part of the original disclosure for applications filed on or after the effective date, and (5) the original ribboned copy of a patent pursuant to 37 CFR 1.178, whereby its submission has been eliminated for all reissue applications.

  • If applicant submitted 4 independent claims and 30 total claims prior to December 8, 2004, but did not pay for the excess claims fees until on or after December 8, 2004, would the revised excess claims fees set forth in CAA apply?

    Yes, the revised excess claims fees apply to any excess claims fee payments paid on or after December 8, 2004. The revised excess claims fees apply to those claims that, after taking into account the claims that have been canceled, are in excess of the number of claims for which the excess claims fee was previously paid for.

  • Applicant filed an application with a benefit claim to an earlier copending nonprovisional application. The benefit claim was filed within four months from the actual filing date of the application, but the relationship of the applications was designated as "continuation." If applicant wants to change the relationship to "continuation-in-part," would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required?

    No, the petition under 37 CFR 1.78(a)(3) and the surcharge would not be required when applicant is changing the relationship in a benefit claim from "continuation" (or "divisional") to "continuation-in-part" or from "continuation-in-part" to "continuation" (or "divisional"), or from "continuation" to "divisional," because the Office was able to schedule the application for publication with the relationship given.

  • Is the phrase "related to" considered a priority claim?

    No. A general statement of relationship is not an actual claim for benefit or priority.

  • What is a joint research agreement (JRA)?

    35 U.S.C. 103(c)(3) defines joint research agreement as " 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." See Pub. L. 108-453, 118 Stat. 3596 (2004). See also H.R. Rep. No. 108-425, at 8-9 (2003).

  • How should the examiner indicate that the claims that have the status identifiers "withdrawn" are rejoined and allowed?

    At the time of allowance, the examiner must indicate that the claims are being allowed in the index of claims and on the Notice of Allowability to avoid a printer query. In addition, examiners are encouraged to provide an explanation on the record either on the Notice of Allowability (e.g., under the section, "Other") or in the reasons for allowance to notify the applicant that the non-elected claims are rejoined and allowed.

  • If an International Application is filed before May 29, 2000 and is pending on or after May 29, 2000, may a continuing application filed under 35 USC 111(a) be filed on or after May 29, 2000, to seek the benefit of Patent Term Adjustment (PTA)?

    Yes, the filing date of the continuing application controls, thus, if the continuing application is filed on or after May 29, 2000, the continuing application is eligible for PTA. See section 4405(a) of the AIPA, 35 USC §§ 111(a) and 120, and 37 CFR § 1.702(f).

  • If a preliminary amendment is filed with a continuation (that utilizes a copy of the 37 CFR 1.63 declaration from the parent application) and contains subject matter not supported by the prior application, is such subject matter new matter in regard to the prior application?

    Yes, but only in regard to the prior application. The continuation is really a continuation-in-part application and a new 37 CFR 1.63 declaration would be required for the continuation-in-part application. Where the preliminary amendment also contains subject matter not otherwise supported by the continuation-in-part application, applicant should also refer to the preliminary amendment in a 37 CFR 1.63 oath or declaration.

  • I received a filing receipt in a Continued Prosecution Application (CPA), but the filing receipt has nothing specific to the CPA, except an indication of a projected publication date. Why doesn't the filing receipt indicate that it is for a CPA rather than the originally-filed application?

    The Office began to mail filing receipts for CPAs beginning in February of 2001. The filing receipts that were first mailed did not explain that they were for the CPA and created considerable confusion. The Office has revised the receipt so that for CPAs, the filing receipt now states "Receipt is acknowledged for a CPA in this nonprovisional Patent Application" and also has a field for the date the CPA was filed between the field for the date the foreign filing license was granted and the Projected Publication Date. Because the application is identified by the application number and filing date accorded when the application was originally filed, the application number and filing date in the header will continue to indicate a filing date earlier than the filing date of the CPA.

  • Does the Office scan both the clean version of the substitute specification and the marked-up version into the image file wrapper (IFW)?

    Yes, both versions should be scanned into IFW.

  • Who should I contact to have a contents entry error in PAIR corrected?

    If the error is a contents entry other than the filing date of an application, including a Continued Prosecution Application (CPA), contact the Customer Service Representative (Representative) for the Technology Center (TC) where your application is assigned. If you are alleging that the date shown in PAIR is an incorrect date, then the Representative may need documentary evidence (e.g., an Express Mail label or a post card receipt) showing that the paper was received on a certain date. Note that the certificate of mailing date (which may be relied upon for timely filing purposes) is not retained in the USPTO PALM records, and that the date a paper is considered received in the Office is the date that the USPTO actually received the papers, unless the paper was filed using Express Mail under 37 CFR 1.10. The Representative will obtain the application file wrapper and determine whether there is an error in the USPTO's records. If there is a date error, the records will be corrected. If the error is in the filing date of an application, including a CPA, a filing date petition is required. Contact the Office of Petitions by telephone at (703)305-9285 or by fax at (703)308-6916 for further information.

  • An original application is filed prior to the effective date of 37 CFR 1.57(a). First and second continuations are filed subsequent to the effective date of 37 CFR 1.57(a). Both the first and second continuations have the same defect as to inadvertently omitted material, which material is present in the original application. Can the inadvertently omitted material be added to both continuations?

    As both continuations are filed subsequent to the effective date of 37 CFR 1.57(a), it may be possible to add the inadvertently omitted material to both depending upon the status of each the continuation applications. Simply amending the second continuation to add the inadvertently omitted material is not sufficient for such material to obtain benefit of the filing date of the original application without amending the first continuation to also add the inadvertently omitted material (unless the second continuation is copending with the original application). The amendment of both continuations may not always be possible. For example, if the first continuation is abandoned, revival of the application pursuant to 37 CFR 1.137 may be appropriate for the purpose of adding the inadvertently omitted material. If, however, the first continuation has issued as a patent, a certificate of correction or a reissue application could not be used to add the inadvertently omitted material to the patent.

  • If an International Application (IA) was published by the World Intellectual Property Organization (WIPO) in a language other than English ( i.e. , German) and designates the United States, is there any action that can be done ( i.e. , filing an English translation) to make the published IA eligible to be prior art under amended 35 U.S.C. 102(e)?

    No. 35 U.S.C. 102(e) and 374, as amended by American Inventors Protection Act of 1999 (AIPA) (Pub. L. 106-113) and as further amended by Technical Amendments Act of 2002 (Pub. L. 107-273), is applicable to the WIPO publication of the IA. 35 U.S.C. 102(e), in combination with 35 U.S.C. 374, clearly state that the WIPO publication of an IA only receives a 35 U.S.C. 102(e) prior art date if the IA is published under PCT Article 21(2) in English and designated the United States. Therefore, the IA must have been: 1) filed on or after November 29, 2000, 2) published by the WIPO pursuant to PCT Article 21(2) in English, and 3) designated the United States in order for the WIPO publication to be available as prior art under 35 U.S.C. 102(e). Any filing of an English translation will not be effective in obtaining a 35 U.S.C. 102(e) prior art date for the publication of the IA published by the WIPO in a language other than English.

  • If the supplemental amendment filed on or after October 21, 2004 during a non-suspension period is matched with the application before the examiner considers the first reply, but the supplemental amendment is non-compliant, how should the examiner treat the supplemental amendment?

    Examiner may either: (1) deny the entry of the supplemental amendment, or (2) enter the supplemental amendment and correct the non-compliance in an examiner's amendment if the supplemental amendment otherwise places the application in condition for allowance. If the examiner denies the entry of the supplemental amendment, the examiner should indicate that the supplemental reply is not being entered in the next Office communication using form paragraph 7.147.

  • How can I get an application filed before 11/29/00 published without using the Electronic Filing System?

    If the application was filed before May 29, 2000, you may file a continuation under 37 CFR 1.53(b) or (d). If a continuation under 37 CFR 1.53(d) (a CPA) is to be filed, remember that the application as originally filed is used to create the patent application publication, so any amendments will not be reflected in the publication. As a result, applicants are encouraged to file a continuation under 37 CFR 1.53(b) instead of under 37 CFR 1.53(d). If the application was filed after May 29, 2000, only a continuation under 37 CFR 1.53(b) may be filed.

  • Does an IDS filed after a reply count as a supplemental reply?

    No. Time frames for submission of IDSs are governed by 37 CFR 1.97, not 37 CFR 1.111.

  • Patent application publications always appear to have a correspondence address printed on them that is the same as the correspondence address for the application. Can no address or a different address be printed?

    No.

  • Can the status identifier be presented before the claim number?

    No, the status identifier must be presented after the claim number. See 37 CFR 1.121(c)

  • Does the application size fee apply to a reexamination proceeding?

    No.

  • What is meant by the "National Stage" of an international application (IA)?

    An IA has two possible phases of processing: an international phase and a national stage phase. The international phase is when the search report and the preliminary examination report (if applicable) are prepared. A U.S. patent cannot be directly granted from the international phase of an IA, but can be issued directly from the national stage (35 U.S.C. 371) of an IA. The national stage is entered where certain requirements are met before the expiration of certain time limits (see 35 U.S.C. 371 and 37 CFR 1.491). The national stage of an IA is prepared by placing a copy of the IA, and other related papers, inside a regular US application file jacket, whereupon it is assigned a US application number, and processed under the US statutes and regulations applying to national stage applications. See the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001), sections 1893 et seq.

  • If the applicant filed an after-final amendment that is non-compliant within the statutory time period with the appropriate extension of time fee, can the examiner allow the application after the six-month statutory period by correcting the non-compliance in an after-final amendment?

    Only when the non-compliance is minor in the after-final amendment that would otherwise place the application in condition for allowance, the examiner may provide an examiner's amendment without an authorization from the applicant to correct the non-compliance if such examiner's amendment is limited to correcting the format errors or any typographical errors and does not make any substantive changes to the claims and/or specification. For example, if some of the status identifiers are improper or missing, the examiner may provide in the examiner's amendment a complete claim listing with the proper status identifiers or instructions to correct (e.g., for claim 2, change the status identifier "twice amended" to "previously presented").

  • If I pay the publication fee, but the patent issued and the application has not published, where should I mail the refund request?

    The refund request should be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

    Mail Stop PGPUB
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450

  • When an applicant submits a request via EFS for a redacted publication, do they need to label the sections in the redacted application as "redacted"?

    37 CFR 1.217 requires that a number of items be submitted for a redacted publication, but labeling the redacted sections in the EFS version as redacted is not required.

  • If a model is being returned after applicant submitted the required postage, where does the examiner take the model to be mailed back to applicant?

    Each TC is responsible to mail back models.

  • If the domestic priority/continuity information has been included in an Application Data Sheet (ADS) in compliance with 37 CFR 1.76, will such information be printed on the front of the application publication (and the patent) as well as within the text of the specification?

    If the domestic priority/continuity information is included in an application data sheet, such information is not required to be included in the first sentence of the specification following the title. The domestic priority/continuity information will be printed on the front page, but not in the specification of the application publication and the patent, unless such information was also provided by the applicant in the first sentence of the specification following the title.

  • Can an applicant request reissuance of a pre-examination notice such as a Notice to File Missing Parts or a Notice to File Corrected Application Papers?

    Yes.

  • Applicant filed an earlier application under 35 USC 111(a) without paying any filing fees. Applicant subsequently wants to abandon the earlier-filed application and file another application claiming the benefit of the earlier-filed application under 35 USC 120 and 37 CFR 1.78(a). Can applicant just pay the processing and retention fee in the earlier-filed application within the time period set forth in a notice requiring the filing fees?

    No, applicant can no longer just pay the processing and retention fee to permit the benefit of the earlier-filed application to be claimed in a later-filed application. Applicant must pay the basic filing fee during the pendency of the earlier-filed application. Effective July 1, 2005, the processing and retention fee practice has been eliminated. See Changes to the Practice for Handling Patent Applications Filed Without the Appropriate Fees, 70 Fed. Reg. 30360, May 26, 2005 (final rule). This change applies to applications filed under 35 USC 111(a) in which the processing and retention fee was not paid before July 1, 2005.

  • Will the Office mail a notice if the publication date is changed?

    Yes, a "Notice of New or Revised Publication Date" is mailed if the publication date changes by more than six weeks due to processing delays, a secrecy order being removed, or subsequent to the revival of an abandoned application. If the publication date is changed, or the application is not to be published because the application is abandoned and the abandonment is recognized more than nine weeks before the projected publication date, then the Notice of Abandonment will serve as the communication that the application will not be published. If applicant adds or deletes a priority claim so that the 18-month publication date is changed, applicant will be mailed a corrected filing receipt, informing applicant of the newly assigned publication date.

  • As S-signatures permit only numbers that are Arabic, how would John T. Smith III utilize his actual name as the S-signature, which actual name is desired by the Office?

    S-signatures permit both the use of letters and arabic numbers. John T. Smith III should use his actual name as part of the S-signature by supplying the roman numeral III by way of letters, the capital letter "I" used three times. He should also supply his actual name as part of the printed or typed version of the name to make it clear what his actual name is. Additionally, other numbers may be represented by text, e.g., the "third."

  • Can applicant submit drawings that include only formal changes (e.g., better quality drawings) and do not include any substantive changes to the drawings?

    Yes, applicant may submit better quality drawings as replacement drawings so long as the requirements of 37 CFR 1.121(d) are met. Examiners should enter the replacement drawings even if submitted after allowance or after final because they do not include any substantive changes.

  • Applicant filed a reissue application on or after December 8, 2004, with same number of claims as in the patent. If the patent has more than three independent claims and more than twenty total claims, would any excess claims fees be required?

    Yes, excess claims fees for each independent claim in excess of three and for each claim (whether independent or dependent) in excess of twenty are required. For example, in a reissue application filed on or after December 8, 2004 that contains four independent claims and twenty one total claims, excess claims fees for the fourth independent claim ($200.00) and the twenty-first claim ($50.00) are required if the applicant is a non-small entity. Under 35 U.S.C. 41(a)(2) as amended by the Consolidated Appropriations Act, the claims in the original patent are not taken into account in determining the excess claims fee for a reissue application.

  • Applicant filed a utility application under 35 U.S.C. 111(a) with a foreign priority claim. The applicant identified the correct filing date, April 21, 2014, of the prior foreign application in the priority claim, but referenced an incorrect application number of the prior foreign application (should have been 2,464,964, instead of 2,464,999). If applicant wants to correct the application number in the priority claim after the time period set forth in 37 CFR 1.55(d) for timely making a foreign priority claim (i.e., more than four months from the actual filing date of the utility application and more than sixteen months from the filing date of the prior foreign application), would a petition under 37 CFR 1.55(e) including a corrected application data sheet and the petition fee be required? 

    Yes, a petition under 37 CFR 1.55(e) including a corrected application data sheet in compliance with 37 CFR 1.76(c) and the petition fee set forth in 37 CFR 1.17(m) would be required because the application number was incorrect. A foreign priority claim pursuant to 37 CFR 1.55 requires identification of the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), and day, month, and year of its filing.

  • 37 CFR 1.58 clarifies that a table may not be included in both the drawings and the body of the specification. Does the apply to applications with tables, or amendments containing tables submitted prior to the effective date of the rule change, October 21, 2004?

    No. The rule change applies only to applications with tables, or amendments containing tables, or amendments containing tables, submitted on or after the effective date of the rule change. The rule change does not apply to applications with tables, or amendments containing tables, submitted prior to the effective date of the rule change, October 21, 2004.

  • Who can sign the statement required by the CREATE Act to disqualify a reference due to a joint research agreement?

    The requirement for signature for the statement is now the same as for any other correspondence as set forth in § 1.33(b). Therefore, a registered practitioner will be allowed to sign the statement in accordance with § 1.33.

  • What areas are considered to be "areas of Japan affected by the earthquake and tsunami"? For example, if one of the inventors or the correspondence address is located in Tokyo, can the applicant request a reissuance of an Office communication?

    The Office did not specify in the notice which areas of Japan are affected since the Office did not want to exclude someone who may have been affected by the earthquake and/or tsunami. However, the need for the relief being requested must be due to the effects of the earthquake and/or tsunami of March 11, 2011. Whether someone in Tokyo would qualify for relief would depend on whether the need for the relief was due to the earthquake and/or tsunami.

  • Can patentee request return of the physical letters patent that was submitted in a reissue application filed prior to the effective date eliminating the requirement to submit the ribboned patent?

    Yes. If the Office can locate the ribboned copy, it will be returned to patentee regardless of the filing date of the reissue or whether the reissue is currently pending.

  • If a 1.99 third party submission contains a patent or printed publication that is material to the patentability of a claim, should the applicant disclose such reference to the Office in an IDS in compliance with 37 CFR 1.97 and 1.98?

    Yes, since the entry of a third party submission does not mean that the information contained in the submission be considered by the examiner, an individual who has a duty to disclose under 37 CFR 1.56, including the applicant, should submit such information in an IDS in compliance with 37 CFR 1.97 and 1.98 to ensure that any material information is properly considered by the examiner.

Patent Business Goals - Patent Law

  • Is there a fee for submission of information by a third party?

    No. A fee has not been imposed for submission of information by a third party.

  • How do I amend claims which were previously amended prior to the change to 37 CFR 1.121?

    After the effective date of the rule change, the latest amended version of a claim must be presented in clean form, including all changes made by the current, as well as any earlier, amendment. A marked-up version showing changes made by only the current amendment must accompany the clean version.

    Applicants will also be able to submit a clean set of all pending claims, consolidating all previous versions of pending claims from a series of separate amendments into a single clean version in a single amendment paper. This submission of a clean version of all of the pending claims will be construed as directing the cancellation of all previous versions of any pending claims. No marked-up version will be required to accompany the clean version where no changes other than the consolidation are being made.

  • I still have some questions regarding claiming small entity status. Who can I talk to?

    Eugenia Jones (Legal Advisor, Office of Patent Legal Administration, (703) 306-5586)

  • I noticed that the new declaration forms no longer have a box to claim domestic priority under 35 U.S.C. 119(e) and 120. Why was this deleted from the forms?

    The domestic priority box was removed from the declaration forms because it is not required by the statutes or by the related rules to state a domestic priority claim in the declaration. The presence of this box created confusion, and may have caused unnecessary objections to declarations when this box was not filled out and applicant was indeed claiming domestic priority to another application. To claim domestic priority under 35 U.S.C. 119(e) and 120, applicant must comply with 37 CFR 1.78 which requires, in part, that the priority claim information be in either the first line of the specification or in an application data sheet.

  • Is there a provision for entry of section headings (e.g., "SUMMARY OF THE INVENTION") under the revised § 1.121 practice?

    Section headings may be added to the specification by merely identifying the precise location for entry followed by the clean version of the exact heading to be entered. The Legal Instruments Examiner (LIE) will enter the heading as a block insert. Applicants are not required to add headings by total paragraph or section replacement, nor is a marked-up version needed.

  • Why are all applications with drawings reviewed in the Office of Initial Patent Examination? Can applications which are not going to be published as part of the pre-grant publication process be reviewed later?

    All applications with drawings need to be reviewed in OIPE to determine whether the drawings are capable of reproduction (can be copied and/or scanned in black and white) and are in the English language. Further compliance with 37 CFR 1.84 will not be required by OIPE. Reproducable drawings are required even if an application is not going to be published, so that the Office will be able to provide a certified copy of the application for foreign priority and other purposes. Furthermore, since applicants may rescind a non-publication request, all applications need to be reviewed according to the same standards regardless of whether they are to be published. In addition, an English translation of the application is required pursuant to 37 CFR 1.52(d)(1). Aside from the non-English text and for the need to have a black and white copy of color drawings/photographs in plant applications (see 37 CFR 1.165(b)), this drawing review during scanning is the same review that has been performed for several years. The Office does not anticipate requiring very many more drawing corrections in OIPE as a result of pre-grant publication.

    As a result of this minimal screening, the Office will not be requiring applicant to submit ‚"formal drawings‚" during preexamination under 37 CFR 1.215(a), the Office will merely require drawings that can be copied and are in the English language. Drawings that are filed in reply to a preexamination notice requiring drawings that can be copied in black and white or are in the English language will be rescanned and included in the patent application publication. If applicant desires to have better drawings included in the pre-grant publication, the drawings will have to be submitted in paper on filing or in electronic form through the Electronic Filing System (EFS) within one month of the filing date of the application, or fourteen months from any priority date claimed 35 U.S.C. §§ 119, 120, 121 or 365(c). See 37 CFR 1.215(c).

    Applicants should also note that the Office may require ‚"formal drawings‚" at allowance merely because applicant originally indicated the drawings as informal. In addition, the patent examiner may find errors in the drawings and require correction of the drawings. If the application was filed after May 29, 2000, any formal or corrected drawings filed after allowance will result in a reduction to any patent term adjustment. See 37 CFR 1.704(c)(10).

  • How should I respond to the Notice to File Missing Parts of Application stating that I owe a large entity filing fee and a large entity surcharge when I submitted an unsigned small entity statement with no authorization to charge fees prior to the effective date of the rule change?

    You must timely respond to the Notice to File Missing Parts to avoid abandonment of the application. Your response may request reevaluation of your prior attempt to claim small entity status since the Office will not on its own reevaluate your prior attempt to claim small entity status. Additionally, the response should include a new written assertion of entitlement to small entity status (e.g., Your attempt to claim small entity status while being ineffective under the former rule, is effective under the amended rule since an unsigned small entity statement accompanied application papers that were signed.).

    A small entity surcharge should also be submitted since the surcharge is owed even if the Office accords small entity status, pursuant to the rule change, based on the previous ineffective attempt to claim small entity status.

  • If multiple reissue applications are filed, into which application should the original patent claims be placed, and how should the claims be numbered in each of the applications?

    The original patent claims should be submitted in each of the multiple reissue applications as either (1) unamended, (2) amended (including underlined and/or bracketed material, or (3) deleted (bracketed) claims. They should retain their original numbering in each of the multiple reissues. Claims added to any of the reissues should be numbered beginning with the next highest number following the last original claim. Unamended original claims may only appear in one of the reissue applications for examination.

  • Will papers containing a submission of information or request for a certificate of correction submitted by a third party be made record of and kept in the patent file?

    No. Papers containing a submission of information or request for a certificate of correction submitted by a third party will not be made of record in the file that they relate to or be retained by the Office.

  • What if I fail to amend my specification/claims according to the revised rule after March 1, 2001?

    The amendment may be considered not fully responsive and treated by the examiner under 37 CFR 1.135(c). The examiner, however, will not give applicant additional time for correcting amendments submitted after final rejection. See MPEP Sec. 714.03.

  • 37 CFR 1.27(a)(2)(i) and (ii) set forth two requirements for qualifying for small entity status as a small business. The first relates to the lack of transfer of rights to a large entity, and the second relates to qualification as to the standards set forth by the Small Business Administration in 13 CFR part 121. Are the two requirements meant to be additive or alternative?

    37 CFR 1.27(a)(2)(i) and (ii) are additive requirements and a party seeking to qualify as a small business must meet both requirements as to transfer of rights and SBA requirements.

  • Why were the small entity forms (PTO/SB/9-12) deleted from the website and how do I now claim small entity status?

    The small entity forms were deleted because effective September 8, 2000, small entity status can be established at any time by a simple written assertion of entitlement to small entity status. Specific forms, like PTO/SB/9-12, are no longer required but the Office will still accept them as a written assertion of entitlement to small entity status. The Office will liberally construe any written reference to small entity status to be a request for small entity status. Several PTO forms, such as the transmittal forms (PTO/SB/5,17,21,50 and 56) and the provisional cover sheet (PTO/SB/16), have been modified to include a box which can be checked to establish small entity status. For more information, see "Simplified Small Entity Status Practice" at http://www.uspto.gov/web/offices/dcom/olia/pbg/cpr.htm .

  • How can Microsoft Word® software be used in preparing "clean" and "marked-up" versions of an amendment in order to comply with revised 37 CFR 1.121?

    In either Word 97 or Word 2000, open the document to be amended. Go to Tools and select Track Changes then Highlight Changes from the pull-down menu. Place a check mark before all three selections in the Highlight Changes dialog box (1. Track Changes while editing; 2. Highlight changes on screen; 3. Highlight changes in printed document). Under "Options" in the same box, select "underline" for inserted text, and "strikethrough" for deleted text. Click on "OK." Click on "OK" again to return to the document. Proceed to amend the document. The document can now be printed showing the underlining and strikethrough. This is the "marked-up version."
    To print the "clean version," go back to the Highlight Changes box under Tools and remove the check mark before "Highlight changes in printed document." Click "OK" and print the document. This is the "clean version" of the amended document, and does not include any markings showing deleted or added subject matter.

  • If an applicant elects to utilize optional paragraph numbering as per § 1.52(b)(6), would amendments to the specification (under §1.121) which add new paragraphs require a renumbering of all the paragraphs?

    No. If the method for numbering paragraphs suggested by the Office is used, a single new paragraph replacing a single original paragraph would retain the same number as the paragraph being replaced. If more than one paragraph replaces a single original paragraph, the additional paragraphs would be numbered with sequential integers following a single decimal, e.g., [0071], [0071.1] and [0071.2] would replace original paragraph [0071]. Original unamended paragraphs before and after the affected paragraph would retain their original numbering.

  • If an attorney represents an assignee of an invention of a patent application, what is the preferred way for that attorney to obtain his/her power of attorney and become of record as applicant's attorney to prosecute the case?

    In order to become of record, the attorney for the assignee should submit all of the following:

    (1) § 3.71(a) statement: A statement setting forth that the assignee, by way of its attorney, is entering the record pursuant to 37 CFR 3.71(c), and assignee, by way of its attorney, wishes to conduct and control the prosecution pursuant to § 3.71(a) to the exclusion of any other entity.
    (2) § 3.73(b) statement: A statement under § 3.73(b) establishing the assignee as the owner of the application; user form PTO/SB/96 is recommended for this purpose.
    (3) Power of attorney: A power of attorney from the assignee to the attorney or to practitioners of a customer number; user form PTO/SB/81 is recommended for this purpose.
    (4) Correspondence address: The correspondence address to be used for the application should be set forth; user form PTO/SB/121 is recommended for this purpose.

    These four submissions can be made as separate papers, e.g., using the above-recommended PTO/SB forms where appropriate, or one or more of papers (1) - (4) may be consolidated.

    The granting of the power of attorney by the assignee to the attorney (rather than by the inventors to the attorney) will preclude any possible conflict of interest arising from practitioner being paid by the assignee yet seeming to represent the inventors. It will also preclude the inventor from revoking the power and appointing another attorney against the wishes of the assignee.

    It is to be noted that the current § 1.63 declaration form no longer contains a space for power of attorney from the inventors.

  • Will all mistakes incurred by the Office and identified by the patentee, the patentee's assignee, the Office, or a third party be corrected?

    No. The Office intends to retain its discretion and may not issue a certificate of correction even if a mistake is identified, particularly if the identified mistake is not a significant one that would justify the cost and time to issue a certificate of correction.

  • Would the Office treat an amendment with a certificate of mailing dated before 3/1/01 (the effective date of revised rule 37 CFR 1.121) as non-compliant if the amendment was submitted without meeting the requirements of revised § 1.121?

    No. If an amendment is filed with a certificate of mailing dated before 3/1/01, the Office will not treat the amendment as non-compliant. Furthermore, if the amendment is an unentered amendment after final and the Office subsequently withdraws the finality of the last Office action after 3/1/01, the Office will not treat the amendment as non-compliant because the certificate of mailing is dated before 3/1/01.

    For example, if the applicant subsequently resubmits an amendment after final with a certificate of mailing dated before 3/1/01 as a preliminary amendment in a CPA filed after 3/1/01, the Office will not treat the amendment as non-compliant. Similarly, the Office will not treat the amendment after final as non-compliant if the applicant subsequently submits it as a submission in a RCE under 37 CFR 1.114.

  • If an application is filed prior to September 8, 2000 with the small entity basic filing fee and an assertion that the applicant is a small entity, but no small entity statement in compliance with former 37 CFR 1.27: (1) what must the applicant do to establish small entity status; (2) is a surcharge under 37 CFR 1.16(e) (or (l)) required; and (3) does it matter whether the Office has issued a Notice to File Missing Parts of Application as of September 8, 2000?

    (1) Nothing is necessary to establish small entity status. The change to 37 CFR 1.27 applies to the application as of September 8, 2000, that is, the applicant is considered to have established small entity status in the application on September 8, 2000.

    (2) The (small entity) surcharge under 37 CFR 1.16 is required. The appropriate basic filing fee was not present on filing (since the application was filed before September 8, 2000, and small entity status was not established until September 8, 2000), and 37 CFR 1.53(f) (or (g)) requires payment of the surcharge under 37 CFR 1.16(e) (or (l)) if the appropriate basic filing fee is not present on filing.

    (3) No. Regardless of whether the Office has issued a Notice to File Missing Parts of Application as of September 8, 2000, the appropriate basic filing fee was not present on filing and 37 CFR 1.53(f) (or (g)) requires payment of the surcharge under 37 CFR 1.16(e) (or (l)) if the appropriate basic filing fee is not present on filing.

  • If amendment by paragraph replacement is now required by the Office for amendments submitted during prosecution, how should I amend the specification in a reissue application at the time of filing?

    Amendment of a reissue specification at the time of filing can be accomplished either by (1) paragraph replacement in a preliminary amendment, or (2) ‚"cut and paste‚" of a two column copy of the original patent, whereby minor changes are inserted at a cut portion of a column and the remainder of the column rejoined. Unlike amendment practice for non-reissue applications, no clean copy of a replacement paragraph should be submitted; rather, underlining and bracketing (to show additions and deletions, respectively) must be employed in the paragraph to be inserted. No accompanying marked-up version of the amended paragraph should be submitted.

  • Under what conditions may the Commissioner issue a certificate of correction to correct a mistake in a patent incurred through the fault of the Office?

    The Commissioner may pursuant to 35 U.S.C. 254 issue a certificate of correction to correct a mistake in a patent incurred through the fault of the Office, which mistake is clearly disclosed in the records of the Office, (1) At the request of the patentee or the patentee's assignee, (2) Acting sua sponte for mistakes that the Office discovers, and (3) Acting on information about a mistake supplied by a third party.

  • Are there software products currently on the market which will automatically number paragraphs?

    Yes. At the very least, recent releases of Word (Office 97 or later) and WordPerfect (9.0) have features for automatically numbering paragraphs.

  • An application is filed before September 8, 2000, which did not comply with former rule 1.27, but which does comply with amended 37 CFR 1.27. The application contained a general authorization to charge fees. The large entity fees were charged by the Office before September 8, 2000, and the application was processed by the Office of Initial Patent Examination and forwarded to the Technology Center for examination. What must applicant do to establish small entity status and to obtain a refund of the difference between the large and small entity fee amount?

    Small entity status is automatically established as of September 8, 2000. To obtain a refund, applicant must file a refund request in accordance with 37 CFR 1.28(a). 37 CFR 1.28(a) was amended (effective November 7, 2000) to provide for refund requests within three months of the date of payment of the full fee (instead of the former two-month period). The date of payment of the fee is the date of receipt in the Office as defined by 37 CFR 1.6. The date of receipt of an authorization to charge fees starts the period for refunds under 37 CFR 1.28(a). Therefore, applicant must explicitly timely request a refund within three months of the submission of the authorization to charge fees if the request for refund is filed on or after November 7, 2000. Any request for refund under 37 CFR 1.28(a) filed before November 7, 2000, must be filed within two months of the date of payment of the full fee in accordance with the version of 37 CFR 1.28(a) in effect at that time.

  • I noticed that the recently modified declaration forms (PTO/SB/01, PTO/SB/03 and PTO/SB/04) no longer have language to appoint an attorney or authorize an agent. How do I appoint a power of attorney or authorize an agent when filing my application?

    To appoint a power of attorney or authorize an agent to act for you, you can use form PTO/SB/81 "Power of Attorney or Authorization of Agent" (also on the USPTO's printable forms website). The power of the attorney portion was removed from the declaration forms because while all the inventors must sign a declaration form, it is not always required that all the inventors sign a power of attorney. For example, it is acceptable to have the assignee(s) appoint the power of attorney. See 37 CFR 3.71. The combined declaration and power of attorney forms will still be accepted by the Office.

  • Where third parties submit information or a request for a certification of correction, will the Office correspond with the third parties about their submission or request?

    No. The Office does not intend to correspond with third parties about the information they submitted either to inform the third parties of whether it intends to issue a certificate of correction or to issue a denial of any request for issuance of a certificate of correction that may accompanying the information. The Office will confirm to the party submitting such information that such information has in fact been received by the Office if a stamped, self-addressed post card has been submitted. See MPEP 503. The status of the patented file, including issuance of any certificate of correction, may be monitored via the web using the Patent Application Information Retrieval (PAIR) system.

  • How would the Office treat an amendment that is not in compliance with 37 CFR 1.121?

    If a preliminary amendment (with a date of certificate of mailing on or after 3/1/01) is non-compliant, the applicant will be given one month from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to resubmit the amendment in compliance with § 1.121. This period of time is not extendable. The examination on the merits of the application may commence without the entry of the preliminary amendment unless the applicant resubmits the amendment in compliance with § 1.121 within the one-month time period.

    If an amendment (with a date of certificate of mailing on or after 3/1/01) filed in response to a non-final Office action is a bona fide reply, but is non-compliant with 37 CFR 1.121, the applicant will be given one-month (or 30 days, if longer) from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to correct the non-compliance in order to avoid abandonment. This period of time is extendable under 37 CFR 1.136(a).

    If an amendment after final (with a date of certificate of mailing on or after 3/1/01) is non-compliant, the unentered amendment will be forwarded to the examiner. The examiner will address the non-compliance in an Advisory Action. Additional time will not be given to make the amendment compliant with the rule. Applicant will have the remainder of the time period (if any) set forth in the final Office action to correct the non-compliance.

    If an amendment under 37 CFR 1.312 (with a date of certificate of mailing on or after 3/1/01) filed before the payment of issue fee is non-compliant, the 312 amendment will be addressed by the examiner in a Response to 312 Amendment (PTO-271). Additional time will not be given to correct the non-compliance. Applicant will have the remainder of the time period (if any) set forth in the Notice of Allowance to correct the non-compliance before, or filed with, the payment of issue fee.

  • How long may the abstract be?

    The abstract may not exceed 150 words in length. This is a departure from the former 37 CFR 1.72, which allowed an abstract to be up to 250 words in length. The reduction in the number of words allowed in the abstract is necessary to harmonize USPTO practice with PCT guidelines.

  • I tried to access the PTO form site to download a small entity form for a small business and have found out that the Office is no longer making any of the four small entity forms available. Must I apply for small entity status only by payment of the small entity basic filing fee?

    No. The Office recommends that you not rely solely on the payment of the exact small entity amount for the basic filing fee (although you can so rely).

    A small entity need no longer obtain a specialized form to request small entity status. Small entity status can be obtained by a simple one sentence request for such status. The request need not take any particular form, it just must convey the concept that small entity status is being requested and should be submitted in an easily recognizable manner.

    For the convenience of applicants, the Office has reformatted some other existing forms, such as the application transmittal forms, to provide a check box for claiming small entity status.

  • Can I merely make a request for transfer of drawings (from the patent file to the reissue application) to satisfy the drawing requirements for a reissue application?

    The Office will no longer grant or act on a request for transfer of drawings. If good quality copies of the patent drawings are submitted at the time of filing, and the drawing copies satisfy the requirements of § 1.84, the copies will be accepted in lieu of formal drawings, and the reissue patent will be printed using the copies of the drawings.

  • What is the effective date for implementing the requirements for amendments by replacement paragraph/claims?

    Mandatory compliance with the revised rule is not required until March 1, 2001. It is suggested, however, that applicants adopt the revised procedures on or after November 7, 2000, in order to adjust to the changes in amendment practice. The time period prior to November 7 will be used by the Office to train technical support personnel on the changes of the new rule.

    On or after March 1, 2001, all amendments must comply with revised § 1.121.

  • An application was filed before September 8, 2000, which did not comply with former 1.27, but which does comply with amended 37 CFR 1.27. The small entity filing fee was paid on filing and the Office processed the application as a small entity after September 8, 2000. Between the filing date of the application and the establishment of small entity status on September 8, 2000, applicant signed a license agreement with a large entity. What should applicant do?

    Applicant should file a paper under 37 CFR 1.28(c) requesting that small entity status be withdrawn and pay the remaining amount owed for the filing fee as a large entity. A surcharge is not required.

  • Where the Office discovers a mistake or receives a submission of information or request for a certificate of correction from a third party, will the patentee be notified prior to the issuance of any certificate of correction?

    Yes. The Office will not issue a certification of correction under 37 CFR 1.322 without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard.

  • Can an amendment after final that was not in compliance with 37 CFR 1.121 be a proper submission for a RCE that was filed with a fee?

    If an amendment after final (with a date of certificate of mailing on or after 3/1/01) is a bona fide reply meeting the reply requirement under 37 CFR 1.111, but is non-compliant with § 1.121, the amendment after final could be considered as a proper submission for a RCE under 37 CFR 1.114. The Office will process the RCE as a proper RCE and withdraw the finality of the last Office action. Applicant will be given one-month (or 30 days, if longer) from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to correct the non-compliance in order to avoid abandonment. This period of time is extendable under 37 CFR 1.136(a).

  • What will happen if an application is filed with an abstract that has more than 150 words?

    When an application is originally filed with an abstract having more than 150 words, the Office of Initial Patent Examination (OIPE) will send applicant a notice to correct the abstract (with a period for reply of two months). The application file will be held in OIPE and not released to the assigned Technology Center for examination until an acceptable abstract is filed. The mere presence of an abstract which fails to comply with amended § 1.72 will not prevent an application from being accorded a filing date. It will, however, delay the initiation of the examination. Failure to comply to the notice within 3 months, in an application subject to Patent Term Adjustment, may cause a reduction of any patent term adjustment.

  • Although the Office no longer makes available the four small entity forms, can I still use them (as I have a blank electronic or paper copy) if I desire to do so?

    Yes. Applicants may continue to use the former small entity forms or similar forms to assert entitlement to small entity status. As the rule change to 37 CFR 1.27 has not changed the requirement for an investigation for entitlement to small entity status, some practitioners have stated that they feel more comfortable using the old form to ensure that a proper investigation is made.

  • If a reissue application is filed which broadens the claims of the invention of the original patent as well as adds claims to a different invention, will the broadened claims of the original invention still be considered to be constructively elected under revised § 1.176?

    Yes. Even though the original patent claims have been broadened, they are still considered as being drawn to the same invention as was claimed in the original patent. Short of a disclaimer of the original claims being filed in the reissue application, claims to the invention claimed in the original patent (even if broadened) will always be considered the elected invention in a first reissue application which additionally contains claims to another invention. If the constructively elected broadened claims correct a legitimate error in the original patent, the first reissue application may be able to issue prior to the completed examination of any later filed divisional applications. If no error is corrected by the constructively elected claims, and the claims are found to be allowable, prosecution of the first reissue application may have to be suspended pending the completion of the examination of any later filed divisional application, at which time the claims will be recombined into a single application for issuance.

Case Studies Pilot - Basics

  • Who can I contact if I have any questions regarding the Topic Submission for Case Studies Pilot Program?

    General questions or concerns about the Topic Submission for Case Studies Pilot Program can be directed to this email address: TopicSubmissionForCaseStudies@uspto.gov.

  • Is there a limit on the number of submissions that I can make?

    No.  There is no limit placed upon the number of submissions from a person or entity.  However, each separate topic should be presented in a separate submission to ensure consideration.

  • What should a stakeholder do if he/she sees that his/her topic has already been submitted by another stakeholder?

    Stakeholders should submit their topic even if they believe a similar topic has already been submitted.  A subsequent submission of a similar topic may point out additional items that the Office should consider in its design of the case study, as well as, let the Office know that multiple individuals believe exploring the topic could enhance quality.  For example, the subsequent submission may suggest that the study should cover a longer period of time, address another sector of the IP community, consider additional examiner behaviors, etc.

  • What is the deadline for submitting topics for consideration in the program?

    To be ensured of consideration, written topic submissions must be received on or before February 12, 2016.

Case Studies Pilot - General

  • Are there any restrictions on what I should submit?

    Submissions should not contain information associated with any particular patent application or patent, any particular examiner, or any particular art unit.  Additionally, topics should focus on patent quality issues and not relate to other issues such as management concerns or statutory changes.  Furthermore, the submission should concisely explain the nature and purpose of the proposed study to aid the USPTO in selecting the best topic(s) for this pilot program and should not include lengthy supporting documentation or arguments.

Application Processes - Popular Patent Application (EBC) Customer Questions