• 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 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 CBM8018:   What is the Patent Trial and Appeal Board doing to provide a level playing field in their trials involving independent inventors and small companies?

    During rulemaking, the Board received and took into account comments from the public, including independent inventors and small companies.  The Board’s proceedings are intended to provide a quicker, less expensive alternative to district court patent litigation.  Discovery is limited and deadlines are established for the completion of trials.  The Board believes this is to the benefit of all parties, including independent inventors and small companies.

  • Question CBM8015:  How does the Patent Trial and Appeal Board handle conflicting case law?

    The Board considers and applies the precedent of the Federal Circuit and the Supreme Court to the facts of the particular cases before it.  The Board strives to decide cases following the closest precedent.  The Board looks for guidance from Supreme Court precedent when Federal Circuit decisions do not provide guidance on a particular issue.

  • 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 CBMR7100:  Can a party to covered business method review appeal the Board’s final decision?

    Yes, a party dissatisfied with the final written decision in a covered business method review may appeal to the Federal Circuit.

  • 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 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 CBM5040:  May a party request rehearing of the final written decision?

    Yes, either party may request rehearing of the Board’s decision.  The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

  • 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 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 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.

  • 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 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 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 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 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 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 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 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 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 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 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.

  • How do I respond to a Notice of Abandonment that I received from the Office of Data Management?

    For questions regarding the Notice of Abandonment contact the Office of Data Management Application Assistance Unit at 571.272.4200 or 1.888.786.0101.

    Detailed information in regards to the Notice of Abandonment is also provided at http://www.uspto.gov/patents/publications/abandonment.jsp

  • What happens to a patent application once the examiner allows it for issuance as a patent?

    Listed below are the stages through which an allowed patent application goes within the PTO.

    1. When the examiner allows an application a message concerning the application number is sent to the Office of Data Management.
    2. The application is then electronically exported to Initial Data Capture (IDC) for electronic capture of the patent file.
    3. It takes approximately 6 weeks from the date that the allowed file is exported for the completion of the Initial Data Capture of the application.
    4. Upon IDC completion, a message is then sent to the File Maintenance Facility (FMF) to ensure that all post allowance correspondence, fees and drawings have been updated. The application may stay in the FMF for approximately 1-2 weeks. However, if all requirements are not yet fulfilled the application will remain at the FMF until the requirements are met.
    5. Once the fee and any correspondence and/or drawings are matched with the application and all requirements have been met for issuance as a patent, the application is then electronically exported to the Final Data Capture (FDC) stage of the process. The FDC makes any updates necessary to the electronic file and places the allowed patent application in an issue. The average time that an allowed application is in the FDC process is 5 weeks (2 weeks of processing time for assignment of issue date). The "Issue Notification" is mailed approximately 3 weeks prior to the issue date of the patent.
    6. The patent grant is mailed on the issue date of the patent. It includes any references to prior patents, the inventor(s)') names, specification, and claims (to name a few). It is bound in an attractive cover and includes a gold seal and red ribbon on the cover.

  • How long will the process take for an application to be resolved?

    Under normal circumstances the application should be resolved in less than 6 days. If the application involves special circumstances, (i.e., waiting for drawings, a signed declaration/oath, etc.) the timetable will vary depending on the response needed.

  • My application has a query initiated (QURI) and I don't know why? 

    The printing contractor has reviewed your application and found a discrepancy. Your application will be reviewed by the Office of Data Management where they will fix the discrepancy, notify you (the customer) for resolution or return the application to the examiner for resolution.

  • Can I advertise my patent for license or sale in eOG:P?

    Yes. On the second Tuesday of every month, the eOG publishes patents for license or sale. The current fee for this service is $25 for each published item. Send only a check or money order made payable to the Commissioner for Patents to:

    Commissioner for Patents
    Office of Data Management
    Attn: Patents for License or Sale
    P.O. Box 1450
    Alexandria, VA 22313-1450

    For additional information interested parties may call Lamont Fletcher at 703.756.1558 extension 143.

  • Are published patents the only content in the eOG:P?

    No. The eOG:P contains a section called "Patent and Trademark Office Notices." In that section, each week, the following information is published:

    • Expired Patents: Patents that expire due to failure to pay required maintenance fees. These patent numbers are published approximately 3 months after expiration.
    • Patents Reinstated: Patents reinstated due to the acceptance of a late maintenance fee.
    • Reissue Applications: Patents filed as reissues.
    • Reexams: Patents requested to be reexamined .
    • Certificates of Correction: Patents granted certificates to correct previously published material.
    • Summaries of final decisions issued by the Trademark Trial and Appeal Board.

      In addition to the information published in the section entitled Patent & Trademark Office Notices, the following is also published in the eOG:P:

      • Errata: Correction of erroneous previously published material.
      • Service by Publication: Notification to cancel a trademark registration within 30 days, pending appearance of a registrant, assignee, or legal representative.
      • Registration to Practice: Names of individuals who have received provisional recognition to prepare and prosecute patent applications.
      • Notices from the Solicitor's Office: Notices to the public regarding changes and updates in Patent rules and regulations and/or other patent-related items.
      • Reclassification Reports: Lists newly established, deleted, or reclassified classes & subclasses, revised every 3 months.
      • Other Miscellaneous information of interest to the public.
  • What is the Electronic Official Gazette - Patents (eOG:P)?

    The Electronic Official Gazette - Patents (eOG:P) delivers the information traditionally contained in the paper version of the OG but in an electronic format on the USPTO web site. The Electronic Official Gazette - Patents (eOG:P) allows you to browse the issued patents for the week.

    Similar to the paper OG, the eOG:P is published every Tuesday and includes bibliographic information, a representative claim, and a drawing (if applicable) of each patent issued that week. Patents are accessible by type of patent (utility, plant, etc.), classification (class and/or subclass), patentee name, and geographical location. Links enable users to "jump" to a specific patent from the various indexes.

    For more information about the eOG:P please visit: http://www.uspto.gov/web/patents/patog/

  • What is the Official Gazette?

    The Official Gazette of the United States Patent and Trademark Office (OG) is issued every Tuesday. The Patent OG summarizes the past week's inventions and the Trademark OG summarizes the past week's trademarks. The Official Gazette, in its entirety, is no longer available in paper form.

    The last issue of the paper was published on September 24, 2002. The Electronic Official Gazette - Patents (eOG:P) delivers the information traditionally contained in the paper version of the OG but in an electronic format on both CD-ROM product and on the USPTO web site. The Electronic Official Gazette - Patents (eOG:P) allows you to browse the issued patents for the week.

    For more information about the eOG:P please visit http://www.uspto.gov/web/patents/patog/

  • How long do I have to submit any drawings required on the "Notice of Allowability" (form PTOL-37)?

    The statutory period for response to a "Notice of Allowability" (PTOL-37) mailed is three months from the mail date. There is no Extension-of-Time permitted when responding to the "Notice of Allowability" (PTOL-37).

  • How long after the Notice of Allowance and Issue Fee Due" (form PTOL-85) has been mailed do I have to pay my issue fee?

    After the examiner has allowed your application, you have 3 months from the mail date of the "Notice of Allowance and Issue Fee Due" (PTOL-85) to pay your fee.

    If you do not pay your fee within the 3-month statutory period, your patent application will be abandoned for failure to pay your issue fee. Please note: unlike some other fees required by the PTO, this is a statutory period that cannot be extended.

    If your application is abandoned for failure to pay your issue fee in a timely manner and you deem that the abandonment is in error, please reference the information available on our Web site or contact Application Assistance Unit at 571.272.4200 or 1.888.786.0101.

  • After my "Notice of Allowance and Issue Fee Due"; (PTOL-85) was mailed, there was a fee increase. My notice states the fee due is different than new fee. I am now ready to pay my issue fee and it is after the date the new rates went into effect. Which amount do I pay?

    The Notice of Allowance is printed with the fee in effect at the time of mailing. If you pay your issue fee after the new rates are in effect, you must pay the new amount. (Please note: It is the responsibility of the applicant/attorney to insure that the correct fee amount reaches the PTO before a rate increase.)

    Please contact the Office of Data Management Application Assistance Unit on 571.272.4200 or 1.888.786.0101 for questions regarding the completion of the "Certificate of Mailing;" on the "Part B-Issue Fee Transmittal" (PTOL-85B).

  • 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.

  • 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.

  • 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.
  • 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.

  • 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

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • Are all applications filed on or after March 16, 2013 subject to the first-inventor-to-file provisions in the AIA? (Question: FITF2104)

    No, the first-inventor-to-file provisions in the AIA apply only to patent applications that contain or contained at any time: (1) a claim to a claimed invention that has an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2012; or (2) a designation as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time a claim to a claimed invention with an effective filng date on or after March 16, 2013.

    Neither filing a request for continued examination, nor entering the national stage under 35 U.S.C. 371, consitutes filing a new application. Accordingly, even if a request for continued examination under 37 CFR 1.114 is filed after March 16, 2013, in an application that was filed before March 16, 2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage under 35 U.S.C. 371 before or after March 16, 2013.

    Additionally, if some of the claims of an application have an effective filng date before March 16, 2013, and other claims have an effective filing date on or after March 16, 2013, then the application will be subject to the first-inventor-to-file provisions. The first-inventor-to-file provisions apply to an applicatoin that contains, or ever contained, a claim to an invention having an effective filing date on or after March 16, 2013.

  • 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.

  • 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

  • If a request for inter partes reexamination is filed on September 16, 2012, how will it be treated?

    Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted.

  • When inter partes review under section 6 of the AIA takes effect on September 16, 2012, will pending inter partes reexaminations be converted to inter partes review proceedings?

    No. Pending inter partes reexaminations will not be converted into inter partes review proceedings. Proceedings for inter partes reexamination filed prior to September 16, 2012, will proceed to conclusion even if the proceedings last beyond September 16, 2012

  • What is inter partes review and when is it available?

    Inter partes review replaces inter partes reexamination as an avenue for a third party's patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012.

  • If a request for inter partes reexamination was granted under the SNQ standard, will the resulting proceeding continue until its conclusion under the SNQ standard?

    Yes. If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.

  • If a request for inter partes reexamination was filed before the enactment date of the AIA, but a determination on the request has not yet been issued, which standard will be applied in determining whether to grant inter partes reexamination?

    The Substantial New Question of patentability (SNQ) standard is applicable in determining whether the request forinter partes reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., September 16, 2011).

  • Did the AIA change the standard for inter partes reexamination?

    Yes. Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. The standard for ex parte reexamination remains unchanged.

  • What is the effective date of the provisions effecting inter partes reexamination?

    The effective date of the inter partes reexamination provisions is September 16, 2011.

  • What is the Patent Trial and Appeal Board doing to provide a level playing field in their trials involving independent inventors and small companies?

    During rulemaking, the Board received and took into account comments from the public, including independent inventors and small companies. The Board's proceedings are intended to provide a quicker, less expensive alternative to district court patent litigation. Discovery is limited and deadlines are established for the completion of trials. The Board believes this is to the benefit of all parties, including independent inventors and small companies.

  • How does the Patent Trial and Appeal Board handle conflicting case law?

    The Board considers and applies the precedent of the Federal Circuit and the Supreme Court to the facts of the particular cases before it. The Board strives to decide cases following the closest precedent. The Board looks for guidance from Supreme Court precedent when Federal Circuit decisions do not provide guidance on a particular issue.

  • May a party request rehearing of the final written decision?

    Yes, either party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

  • May a party submit supplemental information after one month from institution?

    A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.

  • How much time does a patent owner have to file a response and/or amendment after review is instituted?

    The schedule for each proceeding will be set by the Board. Ordinarily, a patent owner will have three months to file a response and/or amendment.

  • May a patent owner challenge the standing of a petitioner in the preliminary response?

    A patent holder may challenge the standing of a petitioner in the preliminary response. For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petition or that the petitioner otherwise is estopped from challenging the patent owner's claims.

  • Does a patent owner have to file a preliminary response to avoid having a proceeding instituted?

    No, a patent owner does not have to file a preliminary response. If the petition does not meet the standard set for instituting the proceeding, then the petition will be denied even if there is no preliminary response from the patent owner. The patent owner may, but is not required to, inform the Board if it does not intend to file a preliminary response.

  • How long does a patent owner have to file a preliminary response after receiving notice that a petition has been filed challenging the patentability of one or more of its claims?

    A patent owner will have three months to submit a preliminary response.

  • If an applicant does not submit the inventor's oath or declaration on filing of a nonprovisional application (other than a reissue application) because applicant plans to postpone submission of the inventor's oath or declaration until a Notice of Allowability issues, is a surcharge required and, if so, when must the surcharge be paid?

    Yes, the surcharge under 37 CFR 1.16(f) is required if the inventor's oath or declaration (executed by or with respect to each inventor) is not submitted on filing of the application. If the surcharge is not paid at the time the application is filed, the Office will send a Notice to File Missing Parts requiring the surcharge. If, however, a general authorization to charge any required fees to a deposit account (that covers fees under 37 CFR 1.16) is submitted on filing of the application, the Office will charge the surcharge in accordance with the deposit account authorization. Payment of the surcharge cannot be postponed until a Notice of Allowability issues.

  • If an applicant does not submit the inventor's oath or declaration on filing of a nonprovisional application (other than a reissue application) because applicant plans to postpone submission of the inventor's oath or declaration until a Notice of Allowability issues, is a surcharge required and, if so, when must the surcharge be paid?

    Yes, the surcharge under 37 CFR 1.16(f) is required if the inventor's oath or declaration (executed by or with respect to each inventor) is not submitted on filing of the application. If the surcharge is not paid at the time the application is filed, the Office will send a Notice to File Missing Parts requiring the surcharge. If, however, a general authorization to charge any required fees to a deposit account (that covers fees under 37 CFR 1.16) is submitted on filing of the application, the Office will charge the surcharge in accordance with the deposit account authorization. Payment of the surcharge cannot be postponed until a Notice of Allowability issues.

  • If an applicant does not submit the inventor's oath or declaration on filing of a nonprovisional application (other than a reissue application) because applicant plans to postpone submission of the inventor's oath or declaration until a Notice of Allowability issues, is a surcharge required and, if so, when must the surcharge be paid?

    Yes, the surcharge under 37 CFR 1.16(f) is required if the inventor's oath or declaration (executed by or with respect to each inventor) is not submitted on filing of the application. If the surcharge is not paid at the time the application is filed, the Office will send a Notice to File Missing Parts requiring the surcharge. If, however, a general authorization to charge any required fees to a deposit account (that covers fees under 37 CFR 1.16) is submitted on filing of the application, the Office will charge the surcharge in accordance with the deposit account authorization. Payment of the surcharge cannot be postponed until a Notice of Allowability issues.

  • If an applicant files an application via EFS-Web and then on the same day files the assignment-statement via EPAS, how can the applicant provide the application number with the assignment-statement (as required by EPAS) given that the inventor(s) will have executed the assignment-statement before the application number is known?

    For purposes of recording an assignment-statement, the applicant is required to provide the application number only on the cover sheet of the EPAS submission; the applicant is not required to place the application number on the executed assignment-statement. However, the executed assignment-statement must identify the application in some way (e.g., name of inventors, title of invention on the specification as filed, and attorney docket number on the specification as filed).

  • If an assignee-applicant files an application on or after September 16, 2012, who should sign a power of attorney?

    If the assignee is named as the applicant, then the assignee-applicant must give the power of attorney. See 37 CFR 1.32. A power of attorney from an assignee may be executed by a person having apparent authority to do so, such as the President of the assignee, or by including a statement of authorization. See MPEP § 324.

  • Prior to September 16, 2012, an assignee was required to proceed via 37 C.F.R. §§ 3.71 and 3.73 to establish ownership of the application to be able to grant a power of attorney to prosecute the application. Is this still the case for a new application filed on or after September 16, 2012, where the assignee files the application as the applicant?

    No, where the assignee is the applicant, the assignee may appoint a power of attorney to prosecute the application without having to comply with §§ 3.71 and 3.73.

  • What is the Patent Trial and Appeal Board doing to provide a level playing field in their trials involving independent inventors and small companies?

    During rulemaking, the Board received and took into account comments from the public, including independent inventors and small companies. The Board's proceedings are intended to provide a quicker, less expensive alternative to district court patent litigation. Discovery is limited and deadlines are established for the completion of trials. The Board believes this is to the benefit of all parties, including independent inventors and small companies.

  • How does the Patent Trial and Appeal Board handle conflicting case law?

    The Board considers and applies the precedent of the Federal Circuit and the Supreme Court to the facts of the particular cases before it. The Board strives to decide cases following the closest precedent. The Board looks for guidance from Supreme Court precedent when Federal Circuit decisions do not provide guidance on a particular issue.

  • May a party request rehearing of the final written decision?

    Yes, either party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

  • May a party submit supplemental information after one month from institution?

    A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.

  • How much time does a patent owner have to file a response and/or amendment after review is instituted?

    The schedule for each proceeding will be set by the Board. Ordinarily, a patent owner will have three months to file a response and/or amendment.

  • May a patent owner challenge the standing of a petitioner in the preliminary response?

    Yes, a patent holder may challenge the standing of a petitioner in the preliminary response. For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petition or that the petitioner otherwise is estopped from challenging the patent owner's claims.

  • Does a patent owner have to file a preliminary response to avoid having a proceeding instituted?

    No, a patent owner does not have to file a preliminary response. If the petition does not meet the standard set for instituting the proceeding, then the petition will be denied even if there is no preliminary response from the patent owner. The patent owner may, but is not required to, inform the Board if it does not intend to file a preliminary response.

  • How long does a patent owner have to file a preliminary response after receiving notice that a petition has been filed challenging the patentability of one or more of its claims?

    A patent owner will have three months to submit a preliminary response.

  • Will the applicant be notified when a preissuance submission is entered into his/her/its application?

    Yes, the Office will notify the applicant upon entry of a compliant preissuance submission in an application file if the applicant participates in the Offices e-Office Action program. The contents of a compliant third-party submission will be made available to the applicant via its entry in the IFW of the application.

  • Will a third party be notified if his/her/its preissuance submission is found non-compliant?

    Yes, if a third party provides an electronic mail message (email) address with a preissuance submission, whether filed electronically or in paper, the Office will notify the third party of such non-compliance at the email address provided and will include the reason(s) for non-compliance. No notification will be issued where a third party does not provide an email address with the submission. See Question: How should a third party request that the Office provide notification if a preissuance submission is compliant or non-compliant? for further information

  • A third party paid the required fee for a submission of five documents in an application. The submission was found to be non-compliant. If the third party makes a re-submission of the same five documents in the application, will he/she/it need to pay the required fee again?

    Yes, to be complete, the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documents) must accompany any resubmission made in response to a notification of non-compliance. However, to satisfy the fee requirement for a resubmission after a finding of non-compliance where the proper fee set forth in 37 CFR 1.290(f) accompanied the non-compliant submission, the third party may request that the Office apply the previously-paid fee to the resubmission. When filing electronically, the request may be made by selecting the third fee radio button in the “Statements” section at the bottom of the “Application Data” screen.  When filing in paper, the request may be made by selecting the third fee checkbox in the “Statements” section of the form PTO/SB/429.  The corrections in the resubmission must be limited to addressing the non-compliance, and the resubmission must be another complete submission, as the Office will not accept amendments to the non-compliant submission.  The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office.  Note that the resubmission must be made before the statutory time period for filing a third-party submission has closed.

  • A third party took advantage of the fee exemption when he/she/it made a first submission of three or fewer documents in an application but received notification that the submission was non-compliant. If the third party makes a re-submission of three or fewer documents in the application, will he/she/it have to pay the required fee?

    Yes, to be complete, the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documents) must accompany any resubmission made in response to a notification of non-compliance. However, to satisfy the fee requirement for a resubmission after a finding of non-compliance where the non-compliant submission of three or fewer documents was accompanied by the fee exemption statement set forth in 37 CFR 1.290(g), the third party may state that the fee exemption applies to the resubmission.  When filing electronically, the statement may be made by selecting the third fee radio button in the “Statements” section at the bottom of the “Application Data” screen.  When filing in paper, the statement may be made by selecting the third fee checkbox in the “Statements” section of the form PTO/SB/429.  The corrections in the resubmission must be limited to addressing the non-compliance, and the resubmission must be another complete submission, as the Office will not accept amendments to the non-compliant submission.  The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office.  Note that the resubmission must be made before the statutory time period for filing a third-party submission has closed.

  • Should I provide the concise description for each listed item as a separate paper?

    While there is no requirement that each concise description of relevance be provided as a separate paper, the Office highly recommends this practice. Providing a separate paper for each concise description of relevance that prominently identifies printed publication to which the concise description pertains will help ensure that the screener and the examiner readily identify and consider it.

  • How do I include the concise description of relevance when filing electronically?

    Concise descriptions may be entered as text in the provided text box on the “Application Data” screen. Alternatively, the concise description may be uploaded as a separate document on the “Attach Documents” screen. When entering a concise description of relevance in the provided text box, up to 1000 characters may be entered. A concise description of relevance that exceeds 1000 characters must be uploaded as a separate document on the “Attach Documents” screen. When filed as a separate paper, the concise description of relevance should clearly identify the document to which it pertains.

  • Can a third party file an annotated copy of a listed document as the concise description of relevance for that listed document?

    No, merely annotating or highlighting the copy of the listed document itself will not be deemed a proper concise description of relevance.

  • Is a concise description of relevance required to be submitted in a particular format?

    No, a concise description of relevance is not required to be presented in a particular format. As one option, it may be presented as a narrative. Alternatively as a second option, a concise description of relevance may be presented as a claim chart mapping various portions of a submitted printed publication to different claim elements.

  • May I use the concise description of relevance to propose how the claims should be rejected?

    No, the concise description of relevance must not propose rejections of the claims. Instead, the concise description should only set forth facts, explaining how an item listed is of potential relevance to the examination of the application in which the third-party submission has been filed. This is done, most effectively, by pointing out relevant pages or lines of the respective document and providing a focused description to draw the examiner's attention to the relevant issues.

    Unlike the concise explanation for a protest under §1.291, which allows for arguments against patentability, the concise description of relevance required by 35 U.S.C. 122(e) is limited to a factual description of a document's relevance. The concise description of relevance, therefore, does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable.

  • How should a third party request that the Office provide notification if a preissuance submission is non-compliant?

    If filing electronically via the dedicated Web-based interface in EFS-Web, the request must be made on the “Applicant Data” screen under the heading “REQUEST FOR NOTIFICATION REGARDINGTHIRD PARTY PREISSUANCE SUBMISSION.” Check the box requesting the notification and enter an email address in the box provided. The email address will not be made of record in the application should the submission be deemed compliant.

    If filing in paper, the request must be made on a separate sheet of paper. The paper should be clearly titled “REQUEST FOR NOTIFICATION REGARDING THIRD PARTY PREISSUANCE SUBMISSION” and identify the email address to which the notification should be directed. This separate paper must be clearly labeled so the paper is not made of record in the application.

  • When filing a preissuance submission electronically via the dedicated third-party submission EFS-Web interface, how does a third party enter an older patent with a serial number earlier than 4,000,000?

    The Office does not keep electronic records for older patents having a serial number earlier than 4,000,000.  Therefore, older patents cannot be verified against the USPTO database and the First Named Inventor and Issue Date fields cannot be automatically populated.  Accordingly, when entering a patent number less than 4,000,000, manually complete the Issue Date and First Named Inventor fields after clicking the “OK” button on the pop-up warning.

  • If ex parte reexamination is ordered based on a determination in the supplemental examination that at least one substantial new question of patentability exists, when will the Office generally mail the first Office action on the merits?

    The Office generally expects to mail the first Office action with or shortly after the mailing of the communication entitled "Ex Parte Reexamination Ordered Pursuant to 35 U.S.C. 257." The patent owner does not have a right to file a patent owner statement after reexamination is ordered. However, the mailing of a first Office action may be delayed if there are other concurrent Office proceedings for the same patent.

  • If one item of information is discussed in the request with respect to multiple issues of patentability, will that single item of information be counted more than one time for each patentability issue?

    No, the Office will count the number of items of information, not the number of issues discussed in the request with respect to that item. For example, a document which is discussed in the request as raising an issue under 35 U.S.C. 101 and also under 35 U.S.C. 112 will be counted as one item of information.

  • What is an "item of information"?

    An item of information includes a document containing information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct. An item of information is not limited to patents and printed publications, and may include, for example, a sales receipt or invoice. If the information is not, at least in part, contained within or based on any document filed as part of the request, the discussion within the body of the request relative to the information will be considered to be an "item of information." For example, if a discussion of a potential application of 35 U.S.C. 101 to patent claim 1 is wholly contained within the body of the request and is not based, at least in part, on any supporting document, then the discussion in the request will be considered to be an item of information.

  • A third party paid the $180 fee for a submission of five documents in an application. The submission was found to be non-compliant. If the third party makes a re-submission of the same five documents in the application, will he/she need to pay the $180 fee again? (Question: FEE5005)

    Yes, for any re-submission, a third party must pay the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documnts). In this instance, a fee of $180 would be required for the re-submission of the five documents.

  • A third party took advantage of the fee exemption when he/she made a first submission of three or fewer documents in an application but received notification that the submission was non-compliant. If the third party makes a re-submission of three or fewer ocuments in the application, will he/she have to pay the $180 fee? (Question: FEE5000)

    Yes, a third party must pay the $180 fee to make a re-submission of three or fewer documents in an application where the third party's first submission of three or fewer documents in the application took advantage of the fee exemption and was found to be non-compliant. The fee exemption does not apply to a resubmission because the third party will not be able to make the "first and only" statement under 37 C.F.R. 1.290(g).

  • How are derivation proceedings different from other AIA proceedings?

    a

  • May I include merely the instituted grounds in my petition with a motion for joinder?

    Yes, the petition accompanied by a motion for joinder may include merely the institued grounds or, alternatively, a new ground of patentability.

  • What email addresses receive email notifications when something happens in a case? (new- February 14, 2014)

    The email addresses of all counsel listed on the "Counsel" screen for a case receive email notifications when something happens (e.g., a document is filed) in a case. Thus, parties should make sure that all appropriate counsel are listed and that their email addresses are correct.

  • What font size should I use in my documents? (new - November 7, 2013)

    Petitions and other focuments created for a proceeding must be in either (A) a proportional font that is 14-point or larger, or (B) a monospaced font that does not contain more than four characters per centimeter (ten characters per inch). See 37 C.F.R. § 42.6(a)(2)(ii). Certain 14-point proportional fonts are so narrow that they cannot be read easily. When using a 14-point proportional font, parties should select a font of sufficient width that the words can be read easily (e.g., Times New Roman).

  • May an attorney who is not designated as lead or back-up counsel take a deposition of a witness or represent a witness at a deposition in an AIA proceeding? (new - July 25, 2013)

    Yes, the attorney, however, must be a registered patent practitioner or recognized by the Board to appear pro hac vice in the proceeding under 37 C.F.R. § 42.10(c).

  • How do I notify the Board that the parties have settled and request that the proceeding be terminated? (new - June 6, 2013)

    The parties should request a conference call and seek authorization to file a joint motion to terminate the proceeding. See 37 C.F.R. §§ 42.72, 42.74. The motion will need to be accompanied by a true copy of the settlement agreement, which can be filed confidentially in PRPS. See 37 C.F.R. § 42.74(b); FAQ G2. If the proceeding is terminated before institution and the petition was filed on or after March 19, 2013, the petitioner may file a request for a refund of the post-institution fee paid. See FAQ E7. The request for a refund should b efiled separately in PRPS after the proceeding is terminated.

  • When is the appropriate time to object to evidence submitted after a trial has been instituted?

    Any objection to evidence submitted after a trial has been institued (e.g., evidence submitted with a patent owner response or a reply) must be served on the opposing party within five business days of service of evidence to which the objection is directed. 37 C.F.R § 42.64(b)(1).

  • How do I file other documents (e.g., a motion to seal or proposed protective order)? (revised - Mar. 20, 2014)

    After you logon to PRPS using your user ID

    • select the relevant proceeding number from the "My Docket" tab
    • click on the "Upload Document" tab
    • select a file and document type (Notice is the default)
    • enter a descriptive document name (less than 255 characters)
    • select availability; and
    • click on "Upload File" and then "Submit."

    Once the transaction is completed, you will receive an email acknowledgement.

  • How does an attorney appear in a proceeding as back-up counsel after being recognized pro hac vice? (new - August 22, 2013)

    An attorney admitted to appear pro hac vice in a proceeding is not designated automatically as back-up counsel in the proceeding. If a party seeks to have an attorney who has been admitted to appear pro hac vice as back-up counsel, the party should file in PRPS a notice updating its mandatory notice information to designate the attorney as back-up counsel and a new power of attorney (unless the power of attorney filed previously includes the attorney). See 37 C.F.R. § 42.8(b)(3). The party also should update its counsel information in PRPS by selecting the appropriate case from the "My Docket" tab, clicking on the "Update Information" at the top-left of the screen, and selecting "Counsel Information." On the following screen, click on "Add Back Up Counsel." Doing so will ensure that the new attorney receives email notifications for the proceeding.

  • How do I waive a patent owner preliminary response in PRPS? (revised - February 14, 2014)

    To waive the filing of a patent owner preliminary response, open the casein PRPS, click on "Upload Document," and select "Preliminary Response." On the following screen, select "Waiving" in response to the question "Is the patent owner filing or waiving the preliminary response?" Then upload a document stating affirmatively that the patent owner intends to waive the preliminary response, and click "Submit."

  • How do I file a patent owner preliminary response in PRPS? (revised - February 14, 2014)

    To file a patent owner preliminary response, open the case in PRPS, click on "Upload Document," and select "Preliminary Response." On the following screen, select "Filing" in response to the question "Is the patent owner filing or waiving the preliminary resonse?" Then upload the document and click "Submit." Note that preliminary resonses are not permitted in derivation proceedings.

    Do not click on the "New Petitions" tab and select "Patent Owner/Respondent Participation." Those options are only used to begin participating in a proceeding as the patent owner/respondent and should not be used once a patent owner/respondent is already verified for a proceeding.

  • Where can I file a patent owner preliminary response?

    The three-month time period for filing a patent owner preliminary response runs from the date on t which the Board enters a Notice of Filing Date Accorded to Peittion. If th patent owner wishes to file a preliminary response or elect to waive the preliminary response, the patent owner must do so within the three-month time period.

  • If the patent owner/respondent's real party in interest is different than the assignee of record in the subject patent or application, can the patent owner/respondent submit the new assignment with the identification of the real party in interest?

    Yes, when the patent owner/respondent identifies the real party in interest in PRPS, the patent owner/respondent may upload a file (in PDF format) that contains the new assignment. The patent owner/respondent should also file a copy of the new assignment with the Office's Assignment Recordation Branch.

  • Will the Office check the patent owner/respondent's real party in interest information and power of attorney against the assignment recorded in the Office?

    Yes, when the patent owner/respondent identifies its real part in interest or files a power of attorney, the Board will check the information with the assignment record (if any) to verify that the information is correct and that the paper is signed properly, if the patent or application has been assigned. Therefore, patent owners/respondents are encouraged to keep assignment records up to date.

  • If I filed an incomplete petition with a payment of the appropriate fees and decided not to correct the petition, can I request a refund of the fees?

    Y

  • Can claim charts include claim constructions, arguments, and explanations as to how the claims are unpatentable?

    a

  • Can I file a petition seeking an inter partes review of a plant patent?

    Yes, 35 U.S.C. § 311(a) provides that, subject to certain requirements, "a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent." This provision is not limited to utility patents.

  • What are the most common errors found in petitions?

    The following are the top 10 common errors:

    1. Improper usage of claim charts by including arguments, claim construction, and/or legal analysis in a claim chart (see FAQ D12)
    2. Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction section
    3. Exhibits do not match the documents listed in the Exhibit List
    4. Failure to identify related matters or provide a statement that there are no related matters
    5. Exhibits are not sequentially numbered in the 1001-1999 range
    6. Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10
    7. Margins less than 1 inch as required by § 42.06;
    8. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by § 42.104(a) or § 42.204(a)
    9. The petition and support documents are served on the patent owner at an address that is not the correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a)
    10. The petition and supporting documents are served on the patent owner later than the filing of the petition
  • If I am filing two petitions challenging the same patent, should I use the same exhibit numbers in both cases?

    a

  • How will the Board review petitions for statutory and regulatory compliance?

    Once a petition is submitted via PRPS, a Board paralegal will review the petition for statutory and regulatory compliance.

    First, there are certain statutory requirements in 35 U.S.C. 135(a), 312(a), and 322(a) that must be met for a petition to be accorded a filing date. The following is a list of the "top 5" things the paralegal will be looking for in IPR, PGR, and CBM petitions:

    • Appropriate fee successfully paid
    • Identification of the patent and the specific claim(s) being challenged
    • Indentification of the real party in interest
    • Copies of the patents and printed publications relied upon in the petition
    • Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner

    The following are the "top 4" things the paralegal will be looking for in DER petitions:

    • Appropriate fee successfully paid
    • Identification of the patent and the specific claim(s) being challenged
    • Identification of the real party in interest
    • Copies of the patents and printed publications relied upon in the petition
    • Evidence, (e.g., certificate of service) that a copy of the petition was provided to the respondent

    If any statutory requirement is not met, the petition is incomplete.

    • The paralegal may call the individual who filed the petition and explain the deficiency
    • The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will receive notification by email
    • The deficiency may be corrected within one month and the petition will be accorded the filing date of the NEW submission
    • If the deficiency is not corrected within one month, the petition will be dismissed. Once exception is when the petitioner challenges more than 20 claims (15 beginning March 19, 2013) but does not pay the excess claims fees - the petitioner will receive notification and can file a request to have the Board review just the first 20 challenged claims (15 beginning March 19, 2013).

    Second, there are certain regulatory requirements in part 42 of 37 C.F.R. that must be met (e.g., page limits, font size, signature, identification of lead and back-up counsel).

    If any regulatory requirement is not met, the petition is defective.

    • The paralegal may call the individual who filed the petition and eplain the defect.
    • Te paralegal will enter a Notice of Filing Date Accorded to Petitoin and the individual who filed the petion will receive notification by email.
    • While the petition will be accorded the filing date of the ORIGINAL submission, the defect must be corrected within one week.
    • If the defect is not correctd within one week, the peition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause, and terminated if the petitioner fails to respond to such an Order.

    If there are no statutory or regulatory erros with the petition, the paralegal wil enter a Notice of Filing Date Accorded to Petition, the petitioner will receive notification by email, and te patent owner/respondent will receive a copy via regular mail.

  • Will the Office terminate the proceeding if I filed a complete petition that contains regulatory defects and failed to correct the defects within the time period set forth in the notice?

    Once the time period for correcting regulatory defects has expired, the petition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause. If the petitioner fails to respond to such an Order appropriately, the proceeding may be terminated. It is important to note that the petitioner will not be entitled to a refund of any fees paid because the petition was in compliance with the statutory requirements for a filing date. For petitions filed on or after March 19, 2013, however, thepetitioner may file a request for a refund of any post-institution fee paid. See FAQ E7.

  • Can I share my user ID with my paralegals or other attorneys in my organization?

    Yes, a single user ID may be shared among a working group. It is important to keep in mind, however, that PRPS docket display is based on the user ID. Therefore, the registered user must ensure that sharing his or her user ID would not violate any protective order.

  • What information is required to register?

    When you are registering to use PRPS, you have to select a unique user ID and password, and enter your name and an email address. If you are a USPTO registered practitioner, you should enter your registration number.

  • Why are there gaps between paper numbers in some proceedings?

    In some previous versions of PRPS, PRPS assigned a sequential number (PAper 1, 2, 3, etc.) to a paper immediately when the paper was uploaded. Thus, if a user uploaded a paper but then deleted it before submiting, the assigned number was not reassigned, causing a gap in the numbering of papers in that proceeding. In the current version of PRPS, papers are assigned a number only when the submission process is completed, so there are no gaps in paper numbers.

  • Can I search for a proceeding by the patent owner?

    No, you may search for a proceeding by the petitioner's name, petition type, patent number, or application number (for derivation proceedings).

  • Can I use PRPS to search for a proceeding without registering?

    Yes, a non-registered user may search for a proceeding and review documents related to a proceeding. However, if you want to file a document or submit a fee payment in a proceeding, you must be a registered PRPS user.

  • What will happen if I am idle for 30 minutes, how do I get back into my session?

    You will have to close your browser and reopen your browser to access the PRPS website. You can open the case again from "My Docket" and locate the hyperlink under "My Pending Tasks" to continue working on the case. Once you have uploaded all your documents, then you can submit them.

  • If I am ide in PRPS for 30 minutes or more, will I lose any of the data entered from the timed-out session if I did not click on the save button?

    No. If you enter some data fields, then either click on the submit button or the save button to complete the activities, all changes will be saved into the PRPS system, and will not be lost from the session time-out. All documents are saved when you click on the upload button, so all uploaded documents will not be lost when you are timed out.

  • If I am idle in PRPS for 30 minutes or more, will I lose any of the completed uploads or activites from the timed out session if I clicked on the save button?

    No. If you enter some data fields, then either click on the submit button or the save button to complete the activities, all changes will be dsaved into the PRPS system, and will not be lost from the session time-out. All documents are saved when you click on the upload button, so all uploaded documents will not be lost when you are timed out.

  • If I am idle in PRPS for less than 30 minutes, what will happen?

    Nothing as long as you are active --(key strokes, clicks, etc.)--, you can continue to work as you normally do.

  • Is there any application programming interface (API) access to PRPS?

    No, API access to PRPS is not permitted at this time.

  • Will the PAIR record for the challenged patent show whether a petition has been filed or a decision on the petition has been granted?

    Yes, for example, PAIR will have entries for the following:

    • Petition Requesting Trial
    • Request for Trial Granted
    • Request for Trial Granted in Part
    • Request for Trial Denied
    • Request for Trial Dismissed
    • Trial Termination or Final Written Decision
    • Trial Review Certificate Issued
  • If the wrong document is submitted, can it be deleted through the PRPS interface?

    Yes, as long as the document has not yet been submitted. When uploading a document, users should ensure that the correct file has been selected before clicking the "Upload File" button. If the wrong document is uploaded but the "Submit" button has not yet been clicked, you may delete the document by clicking the trash can icon shown on the screen. Once all documents are uploaded, the user must click the "Submit" button to complete the submission. Documents uploaded, but not yet submitted, have not been filed with the Board.

    If the wrong document was uploaded and the "Submit" button was clicked, you should file the correct document and a motion to expunge the wrong document as soon as possible. Any motion to expunge filed on the same day as the wrong document will generally be granted.

  • Will the Office provide forms (e.g., power of attorney or IPR transmittal) for filing documents in a proceeding?

    PRPS provides screens for the parties to enter certain information (e.g., lead and back-up counsel and real party in interest_. However, the Office does not have forms beyond those PRPS fillable screens. While forms may become available with future releases, most filings will be part of motion practice rather than pre-defined forms.

  • Are there any naming conventions for documents or character restrictions?

    Theere are no special naming conventions for documents, but the number of characters is limited. The user will be prompted to provide a name that will appear in the docket listing. This name should be simple and descriptive, such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith." Document names must be less than 255 characters.

  • How do I log on to PRPS?

    Go to the Patent Trial an dAppeal Board (PTAB) Web page at: http://www.uspto.gov/ip/boards/bpai/index.jsp, and then click on "Direct Link" under "Patent Review Processing System (PRPS)".

    Once you are gistered, close out of the browser completely, and then bring the browser back up and go to https://ptabtrials.uspto.gov. You will receive an email containing the verificatioin code.

    On the PRPS welcoming screen, click on Login and enter your User ID and password. When the screen asks for the verification code, copy and paste the verification code from the email.

  • What information should be included in a petition that is not filed electronically?

    Each Petition has the following FIVE (5) general requirements:

    Each Petition:

    • MUST be in writing, 37 CFR 1.2:

      All business with the USPTO is transacted in writing. The petition should be directed to the USPTO official delegated the authority to decide that petition. See MPEP Chapter 1002. Since different matters may be considered by different branches or sections of the USPTO, each distinct subject, inquiry or request should be contained in a separate paper to avoid confusion and delay in answering papers dealing wit different subjects. 37 CFR 1.4(c).
    • MUST contain a statement of facts involved, the point(s) to be reviewed and the action requested, 37 CFR 1.181(b):

      The care and completeness with which petitions are drafted can clearly influence the decision rendered. 37 CFR 1.181(b) sets forth the general requirements for the content of a petition. The petition must contain a statement of the facts involved, the point(s) to be reviewed and the action or relief requested. The petition submitted should be as complete as possible and any evidence necessary should be submitted. Any error(s) in a requirement or action on the part of the USPTO should be clearly set forth with the reasons why such requirement or action is considered improper.
    • MUST be accompanied by a fee, if required in order to avoid the petition being summarily dismissed, 37 CFR 1.181(d):

      To avoid a petition being summarily dismissed for lack or insufficient fee, petitioner should make certain that the correct petition fee is submitted along with the petition. See the Please consult the Current USPTO Fee Schedule in Fee Information Page for guidance.
    • MUST be timely filed, as required in 37 CRF 1.181(f), or as required in a specific statute or regulation:

      Generally a petition not filed within two (2) months from the action complained of may be dismissed as untimely. Further, the mere filing of a petition will not stay the period for replying to an examiner's action that may be running against an application or act as a stay of other proceedings. 37 CFR 1.181(f)
    • MUST comply with any specific requirements as provided by statute, regulation, or USPTO policy:

      Care should be taken to review the applicable statute, regulation or USPTO policy to determine if there are other requirements that need to be met in submitting the petition.
  • What is an ePetition?

    An e-Petition is an electronically filed petition, submitted via EFS-Web that automates the petition process and allows petitioners to directly input the requisite information into a secure Web interface and immediately receive an ePetition decision if all requirements are met.

    In addition to the two existing PDF based ePetitions, the Petition to make special based on Age (37 CFR 1.102) and the Petition to Accept Unintentionally Delayed Payment of the Maintenance Fee (37 CFR 1.378(c)), the folowing Web-based ePetitions can be filled out completely online through Web-based screens:

    1. Request for Withdrawal as Attorney or Agent of Record (37 CFR 1.36)
    2. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2))
    3. Petition to Withdraw from Issue after Payment of the Issue Fee 37 CFR 1.313 (c)(3))
    4. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313 (c)(1) or (2) with Assigned Patent Number)
    5. Petition to Accept Lae Payment of Issue Fee - Unintentional Late Payment (37 CFR 1.137(b))
    6. Petition for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.13 (f))
    7. Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(b))
    8. Petition for Revival of an Abandoned Patent Application Abandoned Unintentionally (37 CFR 1.137 (b))
    9. Petition to Correct Assignee After Payment of Issue Fee (37 CFR 3.81(b))

    For information and guidance regarding the submission, automatic processing, and grant of ePetitions, please see ePetition-quickstart guide.

    For further information on ePetitions, please see: ePetition-FAQs

  • What are the ways available to file petitions?

    Petitions, requests, and related inquiries, may be filed with the OFfice of Petitions using any of the following delivery methods:

    • EFS-Web (Web-based Electronic Filing System) accessible through the Electronic Business Center (BC);
    • United States Postal Service (USPS) and addressed to:

      Mail Stop PetitionS
      Commissioner for Patents
      P.O. Box 1450
      Alexandria, VA 22313-1450
    • Non-USPS Delivery Services and addressed to:

      United States Patent and Trademark Office
      Customer Service Window
      Mail Stop Petitions
      Randolph Building
      401 Dulany Street
      Alexandria, VA 22314
    • Selected types of the petitions handled by the Office of Petitions can also be filed as e-Petitions.
    • Facsimile transmission for all petitions, requests, and related inquirires must be directed to the USPTO Central FAX Number of 571-273-8300 unless otherwise indicated below:
      • Petitions to WIthdraw from Issue sent to the Central Fax Number should be marked "Special Processing Submission;"
      • Only Petitions to Withdraw from Issue, in particular, urgent Petitions to WIthdraw from Issue where patent issuance is imminent, may be facsimile transmitted directly to the Office of Petitions at 571-273-0025; or
    • Hand Carry:

      United States Patent and Trademark Office
      Customer Service Window (located on the Ballenger Avenue side of the Randolph Building)
      401 Dulany Street
      Alexandria, VA 22314

      (Hours of operation are 8:30 a.m. to midnight, Eastern Standard Time, Monday through Friday).

      €‹

    Further information regarding mailing and hand carry procedures and addresses for the USPTO may be obtained from:

    €‹
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  • Are all petitions handled by the Office of Petitions?

    No. Petitions are decided in accordance with the delegation of authority as indicated in MPEP§ 1002. Further information on the various petitions handled by the Office of Petitions can be found here under RESOURCE INFORMATION AND REFERENCE MATERIALS.

  • What is a petition?

    A petition is a signed, written request presented to the Office.

  • How are derivation proceedings different from other AIA proceedings?

    Below are some of the main differences between derivation proceedings (DER) nd other AIA proceedings (IPR, PGR, and CBM):

    • Petitioner must have a pending application
    • Respondent may have either a pending application or an issued patent
    • A petition with respect to an invention that is the same or substantially the same invention as a claim contained in a patent issued on an earlier application, or contained in an earlier application, must be filed during the one-year period following the date on which the patent was granted or other earlier application was published, whichever is earlier (35 U.S.C. § 135(a)(2)).
    • Preliminary responses are not permitted
  • As a petitioner for a derivation proceeding, should I file my application in PRPS?

    No, the petitioner's patent application must be filed with the Office like any other application. PRPS should only be used to file the petition for a derivation proceeding with the Board. A petitioner should, however, file a copy of its applicatoin as an exhibit to the petition.

  • How do I file a petition for a derivation proceeding in PRPS?

    Petitions for derivation proceedings may be filed beginning on March 16, 2013. Click on the "New Petitions" tab and select "Create New Petition." Select "DER - Derivation Proceeding" on the following screen and enter the information for the petition. For further information, see the Quick Start Guide above.

  • How do I indicate that the record of a derivation proceeding should not be available to the public?

    A petitioner should inform the Board in the petition when an involved patent application is not available to the public. See 37 C.F.R. § 42.412. Derivation proceedings are kept confidential until reviewed by a Board judge. Also, a petitioner filing confidential information with the petition should file a concurrent motion to seal. See 37 C.F.R. § 42.55.

  • What happens to a petition for a derivation proceeding after it is filed?

    Once a petition for a derivation proceeding has been reviewed and accorded a filing date, the Board may enter an order returning jurisdiction to the examiner of the petitioner's application until such time as the petitioner's claims are in condition for allowance (absent the derivation proceeding). Once the claims are in condition for allowance, theBoard may determine whether to institute the derivation proceeding.

  • Do I need to file a petition with a motion for joinder?

    Yes, a party who wishes to join an inter partes review or post-grant review should file a petition accompanied by a motion for joinder. The motion should address the reasons why joinder is appropriate, identify any new ground(s) of unpatentability asserted in the petition, and explain what impact (if any) joinder would have on the schedule for the existing review. No prior authorization is required for filing the motion for joinder with the petition. However, the party seeking to join the review is encouraged to contact the Board in advance of filing to arrange a conference call with the parties and Board to discuss the joinder request.

  • When may I file a motion for joinder?

    Any request for joinder must be filed, as a motion under 37 C.F.R. § 42.22, no later than one month after the institution date of any inter partes review or post-grant review for which joinder is requested. See 37 C.F.R. §§ 42.122(b) and 42.222(b).

  • How do I request a consolidation of multiple proceedings involving the same patent (e.g., a reexamination and an inter partes review) ? (revised - May 28, 2013)

    A party seeking authorization to file a request for consolidation should contact the Board and request a conference call with the other party or parties and the judge assigned to the Board proceeding. If authorized, a request for consolidation must be filed as a motion. See 37 C.F.R. §§ 42.20 and 42.22.

  • Does the one-year statutory bar under 35 U.S.C. 315(b) apply if I file a request for joinder with an inter partes review petition?

    No, the second sentence of 35 U.S.C. § 315(c) provides that the time limitation set forth in the first sentence of 35 U.S.C. § 315(c) does not apply to a request for joinder.

  • How do I request a joinder?

    Any request for joinder must be filed as a motion under § 42.22, no later than one month after the institution date of any IPR or PGR for which joinder is rquested. See 35 U.S.C. §§ 315(c) and 325(c), and 37 C.F.R. §§ 42.122(b) and 42.222(b). To upload a motion using PRPS, see FAQ G1.

    Only joinder of like review proceedings of the same patent is permitted. See 35 U.S.C. §§ 315(c) and 325(c). For example, an instituted IPR may be joined with another IPR, but not with a PGR or reexamination.

  • What email addresses receive email notifications when something happens in a case? (new - February 14, 2014)

    The email addresses of all counsel listed on the "Counsel" screen for a case receive email notifications when something happens (e.g., a document is filed) in a case. Thus, parties should make sure that all appropriate counsel are listed and that their email addresses are correct.

  • What font size should I use in my documents? (new - November 7, 2013)

    Petitions and other documents created for a proceeding must be in either (A) a proportional font that is 14-point or larger, or (B) a monospaced font that does not contain more than four characters per centimeter (ten characters per inch). See 37 C.F.R. § 42.6(a)(2)(ii). Certain 14-point proportional fonts are so narrow that they cannot be read easily. When using a 14-point proportional font, parties should select a font of sufficient width that the words can be read easily (e.g., Times New Roman).

  • What heading should I use on the first page of papers filed in a case?

    Parties are encouraged to use the heading appearing on papers entered by the Board in the case, which includes the name of the petitioner(s), name of the patient owner/respondent, case number, patent number, and title of the paper. A sample heading is provided here.

  • How do I add additional counsel when there are multiple petitioners for the same proceeding?

    The user designated as lead counsel should select the appropriate case from the "My Docket" tab, click on "Update Information" at the top-left of the screen, and select "Counsel Information." On the following screen, click on "Add Back Up Counsel." Note that lead counsel's user ID must be used to submit documents in the proceeding and taht the user ID may be shared. See FAQs C3, D5.

  • May I submit a redacted version of a document that contains non-useful personal confidential information?

    Yes, evidence and other documents should not include non-useful personal cofidential information, such as social security or taxpayer-identification numbers, dates of birth, names of minor children, financial account numbers, or full driving record. The Office will accpet a redacted version and the submission should be accompanied by a paper noting the reasons for the redaction. See IPR2012-00001, Paper 36, pages 6-8.

  • How do I seek a waiver of the 15-page limit for a request for rehearing?

    A party may contact the Board to seek a waiver of the 15-page pagae limit. Please note that any prior authorization to extend the page limit on a motion does not apply to a request for rehearing on the decision of that motion.

  • What is the page limit on a request for rehearing?

    For the purpose of page limits, a request for rehearing of a decision under 37 CFR § 42.71(d) must be filed in the form of a motion, which is limited to 15 pages (see 37 CFR § 42.24(a)(v)).

  • When is the appropriate time to ojbect to evidence submitted after a trial has been instituted?

    Any objection to evidence submitted after a trial has been institued (e.g., evidence submitted with a patent owner response or a reply) must be served on the opposing party within five business days of service of evidence to which the objection is directed. 37 C.F.R § 42.64(b)(1).

  • When is the appropriate time to object to evidence submitted during a preliminary proceeding?

    Any objection to evidence submitted during a preliminary proceeding (e.g., evidence submitted with a petition or a preliminary response) must be served on the opposing party within ten business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1). The objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. Id. The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days service of the objection. 37 C.F.R. § 42.64(b)(2).

  • How do I file a confidential settlement agreement?

    To file a confidential settlement agreement, select the appropriate case from the "My Docket" tab and click on "Upload Document." Enter the information for the document in the next screen. In the "Availability" field, enter "Parties and Board Only." Click on "Upload File" and then "Submit." The filter should also upload a request that the settlement agreement be treated as business confidential informatio and be kept separate from the files of the involved patent or application. See 37 C.F.R. § 42.74(c). The party should also mark the settlement agreement confidential.

  • Can an organization (e.g., corporation) appear pro se as the patent owner/respondent in a proceeding?

    No, organizations must be represented by counsel. The party's mandatory notice information should specify both lead and back-up counsel. See 37 C.F.R. § 42.8(b)(3).

  • Can an inventor appear pro se as the patent owner/respondent in a proceeding?

    Yes, an inventor may appear pro se if he or she is the owner of the challenged patent (or application in the case of a derivation proceeding).

  • How do I file a patent owner preliminary response in PRPS? (revised - February 14, 2014)

    To file a patent owner preliminary response, open the case in PRPS, click on "Upload Document," and select "Preliminary Response." On the following screen, select "Filing" in response to the question "Is the patent owner filing or waiving the preliminary response?" Then upload the document and click "Submit." Note that preliminary responses are not permitted in derivation proceedings.

    Do not click on the "New Petitions" tab and select "Patent Owner/Respondent Participation." Those options are only used tobegin participating in a proceeding as the patent owner/respondent and should not be used once a patent owner/respondent is already verified for a proceeding.

  • When can I file a patent owner preliminary response?

    The three-month time period for filing a patent owner preliminary response runs from the date on which the Board enters a Notice of Filing Date Accorded to Petition. If the patent owner wishes to file a preliminary response or elect to waive the preliminary response, the patent owner must do so within the three-month time period.

  • Will the Office check the patent owner/respondent's real party in interest information and power of attorney against the assignment recorded in the Office?

    Yes, when the patent owner/respondent identifies its real party in interest or files a power of attorney, the Board will check the information with the assignment record (if any) to verify that the information is correct and that the paper is signed properly, if the patent or application has been assigned. Therefore, patent owners/respondents are encouraged to keep assignment records up to date.

  • Can a power of attorney using a customer number be submitted in a proceeding?

    Yes, a party may file a power of attorney using a customer number, and identify a specific registered patent practitioner that is associated with the customer number as lead or backppup counsel. See § 1.32.

    Note that the party is required to identify a specific registered practitioner as lead counsel in a proceeding. § 42.10. Further, the party must ensure that using a customer number in a power of attorney would not violate any protective order because all of the registered patent practitioners that are associated with the customer number may have access to the file records of the proceeding.

  • Can a patent owner/respondent identify the attorney of record in the subject patent or application as the lead or back-up counsel in the proceeding?

    Yes, the patent owner/respondent may designate the attorney of record in the subject patent or application as the lead or back-up counsel. See § 42.8(b)(3). Therefore, the attorney of record in the subject patent or application, acting as a representative of the patent owner/respondent, may logon to PRPS and designate himself or herself as lead or back-up counsel for the proceeding.

  • Can a patent owner/respondent file a power of attorney appointing a new attorney in a proceeding?

    Yes, if the patent owner/respondent wishes to designate a lead counsel or a back-up counsel who is not already counsel of record in the subject patent, a power of attorney must be filed with the designation of counsel. See § 42.10. The power of attorney must be signed properly, such as signed by the assignee of the entire interest of the patent (see §1.32(b)), and uploaded as a PDF file.

  • How does a patent owner or respondent inform the Board that I want to participate in an AIA proceeding and provide mandatory notice information under § 42.8? (revised - June 26, 2013)

    The patent owner/respondent must first register as a PRPS user and get a user ID. After logging on to the PRPS using the user ID, the patent owner/respondent should click on the "New Petitions" tab and select "Patent Owner/Respondent Participation" to begin the process. PRPS will provide screens to search for the proceeding by patent or application number and enter mandatory notice information (e.g., indentifying the real party in interest, lead and back-up counsel, and related matters). Once the patent owner/respondent submits the mandatory notice information and a Board paralegal verifies the information, the patent owner/respondent will receive an email notification and my then upload documents (e.g., preliminary resopnse, motions). Note that preliminary responses are not permitted in derivation proceedings.

    The "New Petitions" and "Patent Owner/Respondent Participation" options should only be used to begin participating in a proceeding as the patent owner/respondent. Once a patent owner/respondent has been verified and is participating in a proceeding, the verification process should not be used again. Instead, the patent owner/respondent should access the proceeding from the "My Docket" tab.

  • If I filed an inter partes review petition on or after March 19, 2013, may I request a refund of the post-institution fee paid if the Board decides not to institute a review?

    Yes, in such a situation, the petitioner may file in PRPS a request for a refund of any post-institution fee paid. For the example in FAQ E6, a total of $18,000 ($14,000 + $4,000) may be refunded if the petition is denied. The petitioner should specify in the request what amount it believes should be refunded and why.

    In the situation where the Board decides to institute a review for fewer claims than requested, the petitioner may request a refund for each denied claim, post-instituion excess claims fee paid. For the example in FAQ E6, if teh Board decides to institute a review for only 16 claims out of the 25 challenged claims, a total of $3,600 ($400 x 9 denied claims, post-institution excess claims fee paid) may be refunded.

  • Do I need to pay both the request fee and the post-institution fee when I file an inter partes review petition on or after March 19, 2013?

    On filing a petition for inter partes review, payment of both the inter partes request fee ($9,000) and post-institution fee ($14,000) are due. In addition, the appropriate request excess claims fee is required on filing if the petition is challenging more than 20 claims, and the appropriate post-instituion excess claims fee is required on filing if the petition is challenging more than 15 claims. A filing date would not be accorded unless the required fees are paid.

    For example, for a petition that is challenging 25 claims, the following fees are rquired on filing:

    The inter partes request fee (§ 41.15(a)(1)): $9,000

    The inter partes post-instituion fee (§ 41.15(a)(2)): $14,000

    Excess claims fee ($ 200 for each claim in excess of 20) for requesting 5 claims in excess of 20 (§41.14(a)(3)): $1,000

    Post-institution excess claims fee ($400 for each claim in excess of 15) for requestion 10 claims in excess of 15 (§ 41.15(a)(4): $4,000

    Total: $28,000

  • When the Office notifies me of a fee deficiency for excess claims, can I file a corrected petition withou excess claims rather than paying the excess claims fees, so that the petition will be entitled to a filing date as the original submission date?

    Yes, the corrected petition must be filed within the time period set forth in the notice. Such a corrected petition must merely delete the portions related to the excess claims, and not add new arguments or make other substantive changes (e.g., new grounds). The original submission date of the petition will be accorded as the filing date.

  • If I paid the base petition fee for a petition that challenges 25 patent claims, but failed to pay the excess claims fees upon filing, will the petition be accorded a filing date?

    A fee is currently required for each claim in excess of 20 claims. Beginning March 19, 2013, separate fees will be required for each claim in ecess of 15 claims and 20 claims, respectively. See http://www.uspto.gov/aia_implementation/fees.jsp. The Office will notify the petitioner of any fee deficiencies. When the petitioner pays the required excess claims fees within the time period set forth in the notice, the Office will accord the date on which the fees are paid as the filing date.

  • If I filed an incomplete petition with a payment of the appropriate fees and decided not to crrect the petition, can I request a refund of the fees?

    Yes, a petitioner may file a request for a refund of the petition fees when the petition is not accorded a filing date for a failure to meet a statutory requirement.

  • Can I pay the fees using multiple credit cards for one transaction?

    No, only one credit card may be used. Parties may not split payment over multiple credit cards. Furthoer note that Treasury Department regulations limit a credit card payment to a $49,999.99 per day transaction.

  • Can I pay the fees in PRPS using multiple forms of payment?

    No, petitioners must pay the full amount in PRPS using one form of payment. Petitioners with a special need to use multiple forms of payment (e.g., deposit account and credit card) to pay the fees for a single IPR, PGR, or CBM petition should contact the Board at (571) 272-7822. Petitioners will be asked to provide written authorization to change the requested forms of payment. Transfer will the occur as soon as practicable. The date when transfer is completed will be used for purposes of according a filing date to the petition. See FAQ D1.

  • Should I list in my petition other related inter partes reviews, post-grant reviews, or covered business method patent reviews? (new - May 28, 2013)

    Yes, the petitioner should list other related review proceedings, as related matters, including those that are being filed concurrently or subsequently. This will promote administrative efficiency as the Board may assign the same panel to all related review proceedings.

  • How do I submit additional documents along with a petition?

    Various screens are provided in PRPS for submitting a petition, including "Party Information," "petition Documents," "Payment," Counsel Information," "Related Matters," and "Review Petition." A petition and all exhibits to the petition should be uploaded using the "Petition Documents" screen. To submit a document accompanying the petition (e.g., a motion to seal), click on "Upload Document" at the top-eft of the screen, enter the document information in the following screen, and click "Submit." The "Upload Document" function, however, should not be used for the petitoin itself and any exhibits to the petition.

  • What is the preferred format for claim charts?

    Claim charts should be presented in a readable format so that a reader (e.g., the patent owner or a deciding official) is able to locate the disputed claim limitations and the relied-upon portions of the prior art quickly. Presenting claim limitations and prior art teachings in a single column format and/or without appropriate spacing creates inefficiency and, at times, appears to circumvent the page limit set forth in 37 C.F.R. § 42.24. Claim limitations should be presented in a separate column (e.g., claim limitations should be presented in a separate column (e.g., claim limitations in the left column and prior art teachings in the right column), and each claim should be presented in a separate chart.

  • Can claim charts include claim constructions, arguments, and explanations as to how the claims are unpatentable? (revised - February 11, 2014)

    No. Extensive usage of claim charts in a petition is discouraged.

    The rules require that a petition identify how the challenged claims are to be construed and how the claims are unpatentable under the statutory grounds raised. This information is to be provided pursuant to the page limit requirements, which require double spacing. Additionally, the rules require that the petition specify where each element of a challenged claim is to be found in theprior art. The element by element showing may be prvided in a claim chart, which is permitted to be written with single spacing. See § 42.6(a)(2)(iii). Placing one's argument and claim construction in a claim chart to circumvent the double spacing requirement is not permitted, and any such argument or claim construction amy not be considered by the Board.

    The Board previously accepted a few petitions with claim charts that included claim constructions, arguments, and explanations as to how the claim is unpatentable because the procedure for filing AIA petitions was new. However, correction is now required when a petition includes improper usage of claim charts.

  • What are the most common errors found in petitions? (revised - February 11, 2014)

    The following are the top 10 common errors:

    1. Improper usage of claim charts by including arguments, claim construction, and/or legal analysis in a claim chart (seeFAQ D12);

    2. Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction section;

    3. Exhibits do not match the documents listed in the Exhibit List;

    4. Failure to identify related matters or provide a statement that there are no related matters;

    5. Exhibits are not sequentially numbered in the 1001-1999 range;

    6. Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10;

    7. Margins less than 1 inch as required by § 42.06;

    8. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by § 42.104(a) or § 42.204(a);

    9. The petition and supporting documents are served on the patent owner at an address that is not the correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a); and

    10. The petition and supporting documents are served on the patent owner later than the filing of the petition.

  • If I am filing two petitions challenging the same patent, should I use the same exhibit numbers in both cases?

    No. In the situation where a petitioner files multiple petitions challenging the same patent, the petitioner should number its exhibits uniquely for both cases, such as 1001-1099 for case #1 and 1101-1199 for case #2. See § 42.63(c). Similarly, the patent owner in such situation should umber its exhibits uniquely for both cases, such as 2001-2099 for case #1 and 2101-2199 for case #2. Therefore, if the Board decides to consolidate the cases, the exhibits would continue to be uniquely numbered in the consolidated proceeding.

  • Can a petitioner file mandatory notices in a separate document?

    No. The petitioner's mandatory notices must be filed as part of the petition itself. See §§ 42.8(a)(1), 42.104, 42.204, 42.304, and 42.405. The Board previously accepted a few improper mandatory notices because the procedure for filing AIA petitions is new. However, correction is now required when a petitioner's mandatory notices are not filed as part of the petition.

  • Can I present claim charts and arguments in landscape orientation?

    No. All documents, other than drawings, must be written in portrait orientation including claim charts and arguments. The Board previously accepted a few peittions with claim charts written in landscape orientation because the procedure for filing AIA petitions is new.

    Switching from portrait orientation to landscape orientation within a document (e.g., a petition) creates inefficiency for the reviewing officials at the Board. Therefore, correction is now required when a document or portions thereof (e.g., claim charts) are written in landscape orientation. This is consistent with the policy set forth in § 42.1(b) and the practice set forth in § 1.52(a)(1)(iii) for filing papers that are to become a part of the permanent record in the applicaion or patent files within the USPTO.

  • If a petition is incomplete, how much time do I get to complete it?

    The Office will provide the petitioner one month from the Notice of Incomplete Petition to correct the petition. Please see 37 C.F.R. §§ 42.106(b), 42.206(b), and 42.407(b), and FAQ D3.

  • After I file a petition, how do I file a follow-on document (e.g., a motion to expunge)?

    You must use the lead counsel's user ID to submit any document in the proceeding, even when you used a different user ID to file the petition. To upload the document, see FAQ G1.

  • If the correspondence address of record for the subject patent or application is not up to date, can the petitioner serve the petition on the patent owner/respondent at a different address?

    Yes, the petition and supporting evidence must be served on the patent owner/respondent at the correspondence address of record for the subject matter. The petitioner may additionally serve the petition and supporting evidence on the patent owner/respondent at any other address known to the petitioner as likely to effect service. See §§ 42.105(a), 42.205(a), and 42.406(a).

  • How will the Board review petitions for statutory and regulatory compliance? (revised - March 28, 2014)

    Once a petition is submitted via PRPS, a Board paralegal will review the petition for statutory and regulatory compliance.

    First, there are certain statutory requirements in 35 U.S.C. 135(a), 312(a), and 322(a) that must be met for a petition to be accorded a filing date. The following is a list of the "top 5" things the paralegal will be looking for in IPR, PGR, and CBM petitions:

    • Appropriate fee successfully paid,
    • Identification of the patent and the specific claim(s) being challenged,
    • Identification of the real party in interest,
    • Copies of the patents and printed publications relied upon in the petition, and
    • Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner.

    The following are the "top 4" things the paralegal will be looking for in DER petitions:

    • Appropriate fee successfully paid,
    • Identification of the petitioner's pending application,
    • Identification of the respondent's earlier filed patent or application, and
    • Evidence, (e.g., certificate of service) that a copy of the petition was provided to the respondent.

    If any statutory requirement is not met, the petition is incomplete.

    • The paralegal may call the individual who filed the petition and explain the deficiency.
    • The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will receive notification by email.
    • The deficiency may be corrected within one month and the petition will be accorded the filing date of the NEW submission.
    • If the deficiency is not corrected within one month, the petition will be dismissed. One exception is when the petitioner challenges more than 20 claims (15 beginning March 19, 2013) but does not pay the excess claims fees - the petitioner will receive notification and can file a request to have the Board review just the first 20 challenged claims (15 beginning March 19, 2013).

    Second, there are certain regulatory requirements in part 42 of 37 C.F.R. that must be met (e.g., page limits, font size, signature, identification of lead and back-up counsel).

    If any regulatory requirement is not met, the petition is defective.

    • The paralegal may call the individual who filed the petition and explain the defect.
    • The paralegal will enter a Notice of Filing Date Accorded to Petition and the individual who filed the petition will receive notification by email.
    • While the petition will be accorded the filing date of the ORIGINAL submission, the defect must be corrected within one week.
    • If the defect is not corrected within one week, the petition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause, and terminated if the petitioner fails to respond to such an Order.

    If there are no statutory or regulatory errors with the petition, the paralegal will enter a Notice of Filing Date Accorded to Petition, the petitioner will receive notification by email, and the patent owner/respondent will receive a copy via regular mail.

  • Will the Office terminate the proceeding if I filed a complete petition that contains regulatory defects and failed to correct the defects within the time period set forth in the notice?

    Once the time period for correcting regulatory defects has expired, the petition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause. If the petitioner fails to respond to sch an Order appropriately, the proceeding may be terminated. It is important to note that the petitioner will not be enntitled to a refund of any fees paid because the petition was in compliance with the statutory requirements for a filing date. For petitions filedon or after March 19, 2013, however, the petitioner may file a request for a refund of any post-insitution feed paid. See FAQ E7.

  • When will my petition be accorded a filing date?

    Once the Office reviews the petition and determines whether the petition is complete and the appropriate fees have been paid, the Office will send a notice to the petitioner and patent owner/respondent. The submission date of the compliant petition will be accorded as the filing date.

    If the petition complies ewith all of the statutory requirements (see 35 U.S.C. 135, 312, and 322), the original submission date of the petition will be accorded as the filing date. Conversely, no filing date will be accorded if a statutory requirement is not satisfied. For example, for fee deficiencies, the Office will accord the later submission date when all appropriate fees have been paid because the fees are required by statute. See, e.g., 35 U.S.C. 312(a)(1).

    In the situation where a petition complies with all the statutory requirements but contains only regulatory defects, the Office will accord the filing date of the original submission and notify the petitioner of the defects. The regulatory defects must then be corrected within the time period set forth in the notice.

  • Who can register?

    Anyone can register to use PRPS and obtain a user ID, such as a pro se patent owner or an attorney who is not registered to practice before the Office under 37 C.F.R. § 11.6.

  • Why are there gaps between paper numbers in some proceedings? (revised - February 14, 2014)

    In some previous versions of PRPS, PRPS assigned a sequential number (Paper 1, 2, 3, etc.) to a paper immediately when the paper was uploaded. Thus, if a user uploaded a paper but then deleted it before submitting, the assigned number was not reassigned, causing a gap in the numbering of papers in that proceeding. In the current version of PRPS, papers are assigned a number only when the submission process is completed, so there are no gaps in paper numbers.

  • Why have the prefixes of trial proceeding numbers changed from "2012" to "2013" (e.g., IPR2012 to IPR2013)?

    The prefixes of trial proceeding numbers track the fiscal year. Fiscal year 2013 started on October 1, 2012. Thus, any petitions filed between October 1, 2012 and September 30, 2013 will receive a trial proceeding number with a prefix of "2013" (e.g., IPR2013 or CBM2013).

  • Why are there gaps between trial proceeding numbers?

    A trial proceeding will be listed in the search results only when the (multi-step) process of submitting a petition for instituting a trial proceeding via PRPS has been succcessfully completed. If the process of filing a petition is not yet completed or was never completed, a trial number will be provided but it will not be listed in the search results.

  • Will PRPS collect and report statistics on the proceedings?

    Yes, PRPS will collect and report statistics about the new proceedings. Currently, users may search the proceedings based on a particular trial type, party name, petition filing date, institution date, patent number, and application number (for derivation proceedings).

  • What will happen if I am idle for 30 minutes, how do I get back into my session? (new - July 11, 2014)

    You will have to close your browser and reopen your browser to access the PRPS website. You can open the case again from 'My Docket' and locate the hyperlink under 'My Pending Tasks' to continue working on the case. Once you have uploaded all your documents, then you can submit them.

  • If I am idle in PRPS for 30 minutes or more, will I lose any of the data entered from the timed-out session if I did not click on the save button? (new - July 11, 2014)

    You will lose any data entered on the last screen in which you were active before becoming idle. For example, if you were on the counsel page and were entering data for the backup counsel but did not finish and your system was idle for 30 minutes or more, the data entered on that page would be lost.

  • If I am idle in PRPS for less than 30 minutes, what will happen? (new - July 11, 2014)

    Nothing as long as you are active-(key strokes, clicks, etc.)--, you can continue to work as you normally do.

  • How do I enter a foreign address in PRPS?

    Certain screens in PRPS allow for the entering of address information (e.g., for a petitioner or patent owner/respondent's real party in interest). In the case of a foreign address, users should select the appropriate country in the "Country" field, select the blank "-" entry in the "State" field, and the input the next three lines of the foreign address in the "Address Line 1," "City," and "Postal Code" fields.

  • Can I download information in bulk from PRPS?

    PRPS is intended for use by the general public. Due to limitations of equipment and bandwidth, PRPS is not intended to be a source for bulk downloads of USPTO data. Individuals, companies, IP addresses, or blocks of IP addresses who, in effect, deny service to the general public by generating unusually high numbers of daily PRPS accesses (e.g., searches, pages, document retrievals), whether generated manually or in an automated fashion, may be denied access to PRPS without notice.

  • Is there any application programming interface (API) access to PRPS?

    No, API access to PRPS is not permitted at this time.

  • Will the PAIR record for the challenged patent show whether a petition has been filed or a decision on the petition has been granted?

    Yes, for example, PAIR will have entries for the following:

    Petition Requesting Trial

    Request for Trial Granted

    Request for Trial Granted in Part

    Request for Trial Denied

    Request for Trial Dismissed

    Trial Termination or Final Written Decision

    Trial Review Certificate Issued

  • Can more than one person work on a case at the same time?

    Yes, more than one person may review documents or upload documents in a proceeding at the same time, even if they are sharing a user ID.

  • If the wrong document is submitted, can it be deleted through the PRPS interface? (revised - February 14, 2014)

    Yes, as long as the document has not yet been submitted. When uploading a document, users should ensure that the correct file has been selected before clicking the "Upload File" button. If the wrong document is uploaded but the "Submit" button has not yet been clicked, you may delete the document by clicking the trash can icon shown on the screen. Once all documents are uploaded, the user must click the "Submit" button to complete the submission. Documents uploaded, but not yet submitted, have not been filed with the Board.

    If the wrong document was uploaded and the "Submit" button was clicked, you should file the correct document and a motion to expunge the wrong document as soon as possible. Any motion to expunge filed on the same day as the wrong document will generally be granted.

  • How can I check whether I filed a document properly?

    After you upload a document in the proper format (i.e., PDF or MPEG for exhibits and PDF for all other documents) and click "Submit," you will receive an acknowledgement on the screen in PRPS and a filing receipt via email if the document is filed properly. If you did not receive an acknowledgement on the screen or a filing receipt via email if the document is filed properly. If you did not receive an acknowledgement on the screen or a filing receipt via email, the cocument most likely has not been uploaded properly and you shoudl contact the Board at (571)272-7822. You may also check whether the document is listed in the file contents of the proceeding.

  • Are there any naming conventions for documents or character restrictions? (revised - Mar. 20, 2014)

    There are no special naming conventions for documents, but the number of characters is limited. The user will be prompted to provide a name that will appear in the docket listing. This name should be simple and descriptive, such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith." Document names must be less than 255 characters.

  • Is there a limit to the number of documents that can be uploaded per filing?

    No.

  • What is the megabyte limit for a document upload?

    A single uploaded file may not exceed 25 megabytes in size. For technical reasons, PRPS is unable to accept files over 25 megabytes at this time. USPTO expects to be able to increase the limit in future releases.

    If you need to file a document that exceeds 25 megabytes, please call the Board at (571) 272-7822.

    Users are encouraged to reduce the file size by:

    1. splitting a large file into multiple smaller files; and/or
    2. converting MS Word® documents into PDF files, rather than printing documents and scanning them in as PDF files.
  • Will extensions of time be available?

    If PRPS is down during normal business hours, a party may contact the Board and request a one-day extension of time for due dates that are set by rule or orders of the Board. 37 C.F.R. § 42.5. In the unlikely event that an administrative patent judge is not available to rule on the extension, the Board may grant an extension the day after the paper is due. However, no extensions of time will be granted for any statutory time period.

  • If PRPS is down during normal business hours or other unscheduled outage periods, may I file a petition or other documents via email or mail?

    If you have any difficulties with PRPS, please call the Board at (571) 272-7822.

    However, if PRPS is unavailable during normal business hours, petitions (and other documents) may be submitted to the Board via email: Trials@uspto.gov.

    Petitions submitted via email must include:

    * name of point of contact;

    * email address of point of contact;

    * patent number to which the petition corresponds (or application number in the case of a derivation proceeding);

    * application number of the patent;

    * petitioner's application number (in the case of a derivation proceeding);

    * number of claims challenged;

    * type of trial proceeding;

    * power of attorney; and

    * fee, e.g., a deposit account authorization.

    In addition, a petition or document submitted via email or other means must: (1) be accompanied by a motion requesting acceptance of the submission, and (2) identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board. 37 C.F.R. § 42.6(b). It is important to note that a petition will not be accorded a filing date unless it is accompanied by a payment of the appropriate fees (e.g., a deposit account authorization).

    Paper filing via EXPRESS MAIL® (or by means at least as fast and reliable as EXPRESS MAIL®) is authorized only if both PRPS and the Board's email address (Trials@uspto.gov) are unavailable. The mailing address is:

    Mail Stop PATENT BOARD

    Patent Trial and Appeal Board

    United States Patent and Trademark Office

    PO Box 1450

    Alexandria, Virginia 22313-1450

    For hand delivery or delivery via FEDEX, UPS, etc.:

    Mail Stop PATENT BOARD

    Patent Trial and Appeal Board

    United States Patent and Trademark Office

    Madison Building (East)

    600 Dulany Street

    Alexandria, Virginia 22313

  • How do I log on to PRPS?

    Go to the Patent Trial and Appeal Board (PTAB) Web page at: http://www.uspto.gov/ip/boards/bpai/index.jsp, and then click on "Direct Link" under "Patent Review Processing System (PRPS)".

    Once you are registered, close out of the browser completely, and then bring the browser back up and go tohttps://ptabtrials.uspto.gov. You will receive an email containing the verification code.

    On the PRPS welcoming screen, click on Login and enter your User ID and password. When the screen asks for the verification code, copy and paste the verification code from the email.

  • What is a petition?

    A petition is a signed, written request presented to the Office.

  • Are all petitions handled by the Office of Petitions?

    No. Petitions are decided in accordance with the delegation of authority as indicated in MPEP§ 1002. Further information on the various petitions handled by the Office of Petitions can be found here under RESOURCE INFORMATION AND REFERENCE MATERIALS.

  • Will the USPTO help me to select a patent attorney or agent to make my patent search or to prepare and prosecute my patent application?

    A. No. The Office cannot make this choice for you. However, your own friends or general attorney may help you in making a selection from among those listed as registered practitioners on the Office roster. Also, some bar associations operate lawyer referral services that maintain lists of patent lawyers available to accept new clients.

  • 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.

  • What is a PCT application?

    The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of "an international patent", the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries. For more information see

  • 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 14 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 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.

  • 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
  • Who can apply for a patent?

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

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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@DTSA.MIL. The USPTO has very limited authority to terminate any security review.

  • 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.

  • 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.

  • 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 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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).
  • 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.

  • 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.

  • 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.
  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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 .

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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).

  • 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.

  • 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.

  • 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 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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 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.

  • 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).

  • 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.

  • 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.

  • 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.

  • 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)

  • 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.

  • 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.

  • 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.

  • 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 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.

  • Is the Ombudsman Pilot Program free of charge?

    Yes

  • 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.

  • 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.

  • Where did the name "Ombudsman" come from?

    An Ombudsman is typically someone who helps identify and remove organizational roadblocks and can act as an intermediary between an external constituent and an organization. In the context of this Pilot Program, the Ombudsman is meant to ensure that an applicant, attorney, or agent gets the assistance they need when the normal channels have not yielded that assistance.

  • 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

  • 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.

  • Should I contact the Ombudsman Pilot Program if my case is in Pubs (or OPAP, petitions, PCT, etc.)?

    For quickest service, it is recommended that you first contact the organization where your application currently is. If you are unable to get the assistance you require through that channel, then the Ombudsman Pilot Program is available to assist you.

    The Ombudsman Webpage contains a list of Customer Service Numbers and the type of help each area provides.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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).

  • 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 .

  • 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)

  • 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)

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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).

  • 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 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.

  • 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.

  • 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.

  • 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.

  • 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).

  • 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 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.

  • 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.

  • 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 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.

  • 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 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.

  • 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.

  • 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.

  • What time period for reply is set forth in the Notice of Non-Compliant Amendment if the non-compliant amendment is a preliminary amendment?

    If the amendment is a preliminary amendment, the time period is 1 month or thirty days whichever is longer, and this time period is not extendable. If applicant fails to take corrective action, the examiner will examine the application without considering the changes in the non-compliant preliminary amendment.

  • 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 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).

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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".

  • 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.

  • 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).

  • 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.

  • 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 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.

  • 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.

  • 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.

  • 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)

  • 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.

  • 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).

  • 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.

  • 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.

  • 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).

  • 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.

  • 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.

  • 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.

  • 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.

  • 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 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.

  • 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.

  • 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).

  • 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.

  • 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.

  • 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 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.

  • 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.

  • 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.

  • 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).

  • 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).

  • 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.

  • 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).

  • 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).

  • 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).

  • 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).

  • 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.

  • 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 ).

  • 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.

  • 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).

  • 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.

  • 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.

  • 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).

  • 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.

  • 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 ).

  • 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.

  • 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.

  • 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."

  • 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.

  • 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
  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • Will provisional applications be published under the 18-month publication provisions of AIPA?

    No, provisional applications are not eligible for publication.

  • 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.

  • 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.

  • Applicant filed an application with a foreign priority claim. The applicant identified the correct filing date, April 21, 2004, of the prior foreign application in the claim, but referenced the 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 four month period would a petition under 37 CFR 1.55(c) and the surcharge set forth in 37 CFR 1.17(t) be required?

    No, a petition and the surcharge would not be required because the Office was able to properly schedule the application for publication with the filing date given and the prior art date under 35 U.S.C. 102(e) would not be affected.

  • Applicant filed an application under 35 U.S.C. 111(a) with a foreign priority claim to an earlier filed Canadian Application No. 2,464,964, filed May 21, 2004. The priority claim was filed within four months from the actual filing date of the application, but referenced an incorrect filing date of the prior application (should have been April 21, 2004). If applicant wants to correct the filing date in the priority claim after the four month period, would a petition under 37 CFR 1.55(c) and the surcharge set forth in 37 CFR 1.17(t) be required?

    Yes, a petition and the surcharge would be required because the filing date was wrong, because a foreign priority claim pursuant to 37 CFR 1.55(a)(1) requires identification of the filing date of the prior application and the Office enters the filing date given to schedule the application for publication.

  • Applicant filed an application with a claim for the benefit of an earlier copending nonprovisional application, Application No. 10/xxx,xxx, filed under 35 U.S.C. 111(a) on February 27, 2002. The benefit claim was filed within four months from the actual filing date of the application, but referenced an incorrect filing date of the prior application (should have been February 28, 2002). If applicant wants to correct the filing date in the benefit claim 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?

    No, a petition and the surcharge would not be required because the prior application was correctly identified without the filing date, and since a benefit claim pursuant to 37 CFR 1.78(a)(2) does not require identification of the filing date of an application filed under 35 U.S.C. 111(a).

  • 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.

  • 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).

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.--

  • 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.

  • 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.

  • 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).

  • 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.

  • 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.

  • 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.

  • What do I need to type in Public PAIR to retrieve an application? The number that I type to view the application (using http://www.uspto.gov/patft ) does not work.

    The four-digit year, a dash, a seven digit number reflecting the part of the publication number not including the year, a dash and a two digit kind code. For example, type "2001-0000241-A1." "US-2001-0000241-A1" also works.

  • 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.

  • 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 ).

  • 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.

  • 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).

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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 ).

  • 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.

  • 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.

  • 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 ).

  • 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.

  • 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.

  • 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.

  • 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.

  • 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).

  • 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.

  • 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.

  • 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.

  • 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).

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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 ).

  • 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.

  • 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.

  • 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.

  • 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.

  • 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 ).

  • 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 .

  • 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.

  • 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.

  • 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).

  • 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).

  • 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.

  • 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).

  • 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 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.

  • 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.

  • 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.

  • 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.

  • 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).

  • 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 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.

  • 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).

  • 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.

  • 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).

  • 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.
  • 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.

  • 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 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.

  • Will the 35 U.S.C. 102(e) dates be printed on patents in the future?

    Currently, theres no such plan.

  • 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] .

  • 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.

  • 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).

  • 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 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.

  • 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).

  • 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).

  • 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.

  • 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.

  • 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 .

  • I received a decision dismissing my request for prioritized examination for a request for continued examination. May I file a petition if I think the decision is not proper? May I file a second request for prioritized examination?

    Applicant may file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the USPTO in not granting the request before filing such a petition under 37 CFR 1.181.

    Alternately, applicant may file a new request for prioritized examination for that same request for continued examination. The new request must include the proper fees and be timely; i.e., be filed prior to the mailing of a first Office action after the filing of the request for continued examination.

  • How do I file a Request for Prioritized Examination?

    The request for prioritized examination may be filed using form PTO/AIA/424, which is available on EFS-Web and on the Office's Internet Web site at http://www.uspto.gov/forms/index.jsp. Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant's form should be an equivalent to the USPTO's form.

  • My application has been granted special status under the prioritized examination (Track One) program. Will the application remain in that special status until either issuance or abandonment of the application?

    The prioritized examination program grants special status until one of the following occurs:

    i. Applicant files a petition for extension of time to extend the time period for filing a reply.
    ii. Applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.
    iii. Applicant files a request for continued examination (RCE).
    iv. Applicant files a notice of appeal.
    v. Applicant files a request for suspension of action.
    vi. A notice of allowance is mailed.
    vii. A final Office action is mailed.
    viii. The application is abandoned.
    ix. Examination is completed as defined in 37 CFR 41.102.

  • 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 is the Official Gazette?

    The Official Gazette of the United States Patent and Trademark Office for Patents (OG) is issued every Tuesday and summarizes that week's patented inventions.

  • 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.

  • 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.

  • 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 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.

  • 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).

  • 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 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.

  • 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.

  • Can I bring in my patent application to your office?

    Yes, you may personally deliver your patent application to the U.S. Patent and Trademark Office (USPTO). The USPTO, is located in Alexandria, Virginia >> Directions. The following mailing addresses may be of assistance to you.

    Mailing address of the U.S. Patent and Trademark Office is:

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

    For private courier patent deliveries, the street address of the USPT0's mailroom is:

    United States Patent and Trademark Office
    Customer Service Window
    Randolph Building
    401 Dulany Street
    Alexandria, VA 22314

  • Can I fax in my patent application?

    No, you can not fax in your patent application. Fax machines do not currently produce a document of sufficient quality to allow the text to be scanned and processed for publication purposes. Applications may, however, be filed through the Electronic Filing System (EFS). For additional information on EFS, contact the Electronic Business Center at (866) 217-9197 (toll free) or (703) 305-3028. For additional information regarding filing patent applications, 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 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.

  • 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.

  • How does one file protest on patents that are pending?

    Protests by a member of the public against pending applications will be referred to the examiner having charge of the subject matter involved. A protest specifically identifying the application to which the protest is directed will be entered in the application file if: (1) The protest is submitted prior to the publication of the application or the mailing of a notice of allowance under rule 1.311, whichever occurs first; and (2) The protest is either served upon the applicant in accordance with rule 1.248, or filed with the Office in duplicate in the event service is not possible. For more detailed information on protesting a patent, you may visit our Web site athttp://www.uspto.gov/web/offices/pac/mpep/mpep.htm for the Manual of Patent Examining Procedure (MPEP) Chapter 1900.

  • How long does it take for a patent application to be processed?

    Currently, the average patent application pendency is 24.6 months. Applications received in the U.S. Patent and Trademark Office are numbered in sequential order and the applicant will be informed within eight weeks of the application number and official filing date if filed in paper. If filed electronically, the application number is available within minutes.

  • 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 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 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

  • 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

  • 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

  • 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

  • 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.

  • 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.

  • 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.

  • 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 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • Can you give me some information on companies that can help with my invention?

    Invention development companies are private and public research companies that help inventors develop, patent, and promote their ideas so they can be commercially licensed or sold. While many of these organizations are legitimate, some are not. Here are seven tips to help you make smart invention development decisions:

    Learn About the Patent Process.
    When you understand the basics of how to get a patent, you will know when invention marketers are making promises they, or the patent system, can't deliver.

    Do Your Homework.
    Check the organization's references, ask for credentials, and then check them.

    Be Realistic.
    Not every invention is patentable. Be wary of any developer willing to promote virtually any invention.

    Know Where Your Money Is Going.
    Ask the organization how your money will be spent. Be on guard against large up-front fees.

    Protect Your Rights.

    DO NOT disclose your invention to a developer over the phone before first signing a confidentiality agreement. You could forfeit valuable patent rights.

    Track Your Invention's Progress.
    Once you decide to use an invention development organization, deal directly with the agent or patent attorney who will be handling your patent application.

    Don't Get Discouraged!

    The patent process can be very complicated, so you will probably need professional help. There are many good patent agents and attorneys that can help you. The U.S. Patent and Trademark Office maintains a nationwide register of attorneys and agents who meet our legal, scientific and technical requirements. For information on registered patent attorney and agents, you may visit the USPTO's Office of Enrollment and Discipline Web site at http://www.uspto.gov/go/oed.

    Protests by a member of the public against pending applications will be referred to the examiner having charge of the subject matter involved. A protest specifically identifying the application to which the protest is directed will be entered in the application file if: (1) The protest is submitted prior to the publication of the application or the mailing of a notice of allowance under rule 1.311, whichever occurs first; and (2) The protest is either served upon the applicant in accordance with rule 1.248, or filed with the Office in duplicate in the event service is not possible. For more detailed information on protesting a patent, you may visit our Web site athttp://www.uspto.gov/web/offices/pac/mpep/mpep.htm for the Manual of Patent Examining Procedure (MPEP) Chapter 1900.

  • How do I get help marketing my invention?

    In nearly all states there are state planning and development agencies or departments of commerce and industry to assist inventors . If you do not know the names and addresses of your state organizations, you may obtain this information by writing to the governor of your state or by accessing the Small Business Administration Web site at http://www.sbaonline.sba.gov/.

  • I would like to sell a patent. Do you have a way of advertising it?

    Yes. Upon request and payment of a fee for this service, the U.S. Patent and Trademark Office will publish in the Official Gazette of the United States Patent and Trademark Office; Patents, a notice of the availability of a patent for license or sale. For the current schedule of fees, see the U.S. Patent and Trademark Office (USPTO) Web site at http://www.uspto.gov/go/fees* . Please note: Fees are subject to change in October of each year and should therefore be verified before submission to the USPTO. To obtain further information, you may contact the Office of Patent Publication at 571-272-4200.

  • Where can I obtain a USPTO form?

    All USPTO forms are available on our Forms page.

  • 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.

  • 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. 

  • 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.

  • 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.

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

    Information is available on the Patent FAQs page.

  • 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 Investors Assistance Center (IAC).

  • Who can I contact if I have questions about applying for a patent or trademark?

    You may call the USPTO Contact Center at 800-786-9199 or 571-272-1000.

    Additional contact information is available on this site at our Contact Us page.

  • 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.

  • 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,¿, €,

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

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

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

    No. The Accelerated Examination petition is manually processed.

  • 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 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".

  • 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 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.

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

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

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

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

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • Is there a fee to participate?

    There is no fee associated with participation in this pilot. However, applicants will be responsible for paying the Pre-Grant Publication fee as set forth in 37 CFR 1.18(d); see 37 CFR 1.211.

  • What if my consent is initially denied?

    If a consent does not meet all requirements, the applicant will be notified and an opportunity will be given to correct deficiencies.

  • 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.

  • Do I have to send the USPTO an email notification of my intent to file the consent to verify TC 2100 or Business Methods, Class 705 classification?

    No, you do not have to send the USPTO an email notification of your intent to file the consent in order to verify TC 2100 or Business Methods, Class 705 classification. However, the USPTO will help any applicant in identifying potential applications for this pilot. Any applicant having a question for the USPTO about this pilot may email PeerReviewPilot2007@USPTO.gov.

  • 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.

  • Should foreign references be accompanied with full English translation?

    All submission must include any necessary English translations.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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/communitypatent [These links to non-Federal Government Web sites do not imply endorsement of this particular organization or the content on these sites.]

  • How is the patent prosecution process different for participants in the pilot program?

    The only difference in the patent prosecution process for participants in the pilot program is that applications that successfully complete the posting and review process with at least one prior art reference document (including a compliant submission from Peer-to-Patent) forwarded to the Office, will receive advancement of examination for the first Office action on the merits. Examiners will consider all documents and comments submitted by the peer review process and will give those documents and comments the weight the examiner deems appropriate. Further prosecution of the applications submitted under this program will continue in the conventional manner.

  • 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.

  • 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.

  • 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.
  • What if the application is not published?

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

  • 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.

  • 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).

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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 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.

  • 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.

  • 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.]

  • Is there a limit on how many priority documents I can retrieve for a single application?

    No.

  • Can I file a Request for Continued Examination (RCE) after the Board's decision?

    Yes. Appellant may file an RCE within the 2 month period after the decision is entered. See MPEP §§ 1215.01, 1215.02, 1215.03. See also MPEP § 706.07(h) and 37 CFR § 1.114(a)(3) for procedures for filing an RCE after a Board decision and before an appeal to a court.

  • Can I file a Request for Continued Examination (RCE) before the Board's decision?

    Yes. Applicants should advise the Board when an RCE is filed in an application containing an appeal awaiting decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision. If the appeal has not been decided, the filing of the RCE will result in dismissal of the appeal. See MPEP §§ 1215.01, 1215.02, 1215.03. See also MPEP § 706.07(h) for procedures for filing an RCE after appeal but before Board decision.

  • I received an Order Denying Oral Hearing. How do I request reconsideration and/or petition this order?

    You will need to file a petition under 37 CFR § 41.3 and the requisite fee under 37 CFR § 41.20(a) requesting that the hearing request be accepted. Such petition is due within 14 days from the Order Denying Oral Hearing or other time period set by the Board in writing. See 37 CFR § 41.3(e). The Chief Administrative Patent Judge or his/her designee will decide the petition.

  • How do I file a notice of appeal?

    An applicant must follow the requirements set forth in 37 CFR § 41.31 which require that a notice be filed within the time allowed for response from the examiner's last office action, and also pay a fee. See Section 1204 of the Manual of Patent Examining Procedure. The notice of appeal and appropriate fee may be filed up to 6 months from the date of the Office action from which the appeal was taken, so long as an appropriate petition and fee for an extension of time under 37 CFR 1.136(a) is filed either prior to or with the notice of appeal. A sample form can be found at http://www.uspto.gov/web/forms/sb0031.pdf. If certificate of mailing procedures under 37 CFR § 1.8 are used, see MPEP 512. The actual receipt date of the Notice of Appeal will also be the date which is entered on Office records and from which any subsequent periods are calculated. For example, 37 CFR § 41.37 gives an appellant 2 months from the receipt date of the notice of appeal to file an appeal brief. If the last day to reply to a final Office action was January 10, 2011, and applicant deposited a Notice of Appeal with fee in the U.S. mail on January 10, 2011, and so certified using a certificate of mailing, that appeal is timely even if it is not received in the U.S. Patent and Trademark Office until January 16, 2011. Since the date of receipt of the notice of appeal is January 16, 2011, this date will be used to calculate the time at which the brief is due, and thus the brief will be due on March 16, 2011. This is 2 months after the date of receipt of the notice of appeal.

  • The mailing of a panel decision on a Pre-Appeal Brief Conference Request resets the time period for filing an appeal brief to one month from mailing of the decision on the request, or the balance of the two-month period running from the receipt of the notice of appeal, whichever is greater. The time period for filing an appeal brief is extendible under 37 CFR 1.136. If applicant wishes to file an RCE, when would applicant be required to file the RCE?

    The RCE must be filed during the pendency of the application. The RCE would be timely if submitted within the greater of two months from the date of the notice of appeal or one month from the mail date of the panel's decision on the Pre-Appeal Brief Conference Request. The time period for filing the RCE is extendable under 37 CFR 1.136.

  • If applicant wishes to reinstate an appeal after prosecution is reopened, can applicant file a new notice of appeal and also request a Pre-Appeal Brief Conference?

    Yes. If the Office reopens prosecution and applicant wishes to reinstate the appeal, applicant may file both a new notice of appeal and a new request for Pre-Appeal Brief Conference on the same date. It makes no difference if applicant previously filed a request for Pre-Appeal Brief Conference and received a panel decision; a new request for Pre-Appeal Brief Conference may be filed with a new notice of appeal.

  • If the "Notice of Panel Decision from Pre-Appeal Brief Review" indicates that the request is improper and a conference will not be held (Finding 4), what is the time period for filing an appeal brief to perfect the appeal?

    The time period for filing an appeal brief will be reset to one month from the mailing of the decision or the balance of the two-month time period running from the notice of appeal, whichever is greater. The time period for filing an appeal brief is extendible under 37 CFR 1.136. The Office will waive 37 CFR 41.37(a)(1) to the extent that the rule is inconsistent with the Pre-Appeal Brief Conference Pilot Program.

  • If applicant receives a panel decision that prosecution is being reopened, can applicant request a refund of the notice of appeal fee?

    No. The notice of appeal fee is not refundable even if the panel decision is favorable to the applicant. However, any previously paid notice of appeal fee will be applied to a new appeal on the same application as long as a final Board decision has not been made on the prior appeal. See MPEP 1204.01.

  • If the "Notice of Panel Decision from Pre-Appeal Brief Review" requires applicants to proceed to the Board of Patent Appeals and Interferences (Finding 1), what is the time period for filing an appeal brief to perfect the appeal?

    The time period for filing an appeal brief will be reset to one month from the mailing of the decision on the request, or the balance of the two-month time period running from the notice of appeal, whichever is greater. The time period for filing an appeal brief is extendible under 37 CFR 1.136. The Office will sua sponte waive 37 CFR 41.37(a)(1) to the extent that the rule is inconsistent with the Pre-Appeal Brief Conference Pilot Program.

  • If applicant receives a "Notice of Non-Compliant Pre-Appeal Brief Request for Review" (Form PTOL-462) in response to the Request, what is the time period for filing an appeal brief to perfect the appeal?

    Applicant will be promptly notified if the request is dismissed as non-compliant. The time period for filing an appeal brief two months from the filing date of the notice of appeal continues to run. See 37 CFR 41.37(a). Appellants may petition for extensions of time under 37 CFR 1.136 pursuant to 37 CFR 41.37(e).

  • Is a Pre-Appeal Brief Conference panel decision a final agency action for purposes of court review?

    No. A panel decision is not a final agency action for purposes of court review. An applicant who is dissatisfied with the panel's decision must pursue the appeal before the Board of Patent Appeals and Interferences.

  • When can applicant expect to receive the panel's decision on the Pre-Appeal Brief Conference Request?

    Generally, the Office should mail a decision within 45 days of a properly-filed request.

  • Will the Office provide a written analysis of the panel's decision?

    No. In response to the Conference Request, the Office will mail a form titled, "Notice of Panel Decision from Pre-Appeal Brief Review" indicating one of the following:

    • Finding 1: The application remains under appeal because there is at least one actual issue for appeal.
    • Finding 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
    • Finding 3: The application is allowed on the existing claims and prosecution remains closed.
    • Finding 4: The request fails to comply with the submission requirements and is dismissed.
  • Who substantially reviews the Pre-Appeal Brief Conference Request?

    The Technology Center Art Unit supervisor will designate a panel to consider the request. The panel will consist of at least a supervisor and the examiner of record.

  • Can the applicant attend the panel review of the Pre-Appeal Brief Conference Request?

    No. The Office will not permit the applicant to attend the panel review of the request and no interviews will be granted prior to issuance of the panel's decision.

  • If applicant files a defective notice of appeal accompanied by a compliant Pre-Appeal Brief Conference Request, and the Office mails a notice titled "Communication Re: Appeal" (PTOL-461) informing applicant that the notice of appeal was defective, will the Office consider the compliant Pre-Appeal Brief Conference Request if applicant corrects the defective notice of appeal without resubmitting the request for Pre-Appeal Brief Conference?

    No. Applicant must resubmit the request for Pre-Appeal Brief Conference on the same date as the compliant notice of appeal. The Office will not waive the requirement that they be submitted on the same date and will not consider a request for Pre-Appeal Brief Conference that is filed prior to a proper notice of appeal.

  • Who will review the request to determine whether the request meets the formality requirements for the Pre-Appeal Brief Conference?

    The Office has established an Appeal Center to review the formality requirements of the Pre-Appeal Brief Conference Request. If the request does not meet the formality requirements, the Office will mail a notice titled "Notice of Non-Compliant Pre-Appeal Brief Request for Review" (Form PTOL-462). This notice will not be considered a panel decision.

  • If applicant files a defective notice of appeal and the Office mails a notice titled "Communication Re: Appeal" (PTOL-461) informing applicant that the notice of appeal was defective, can applicant file a compliant notice of appeal and also request a Pre-Appeal Brief Conference?

    Yes. Applicant may request a Pre-Appeal Brief Conference if the request is filed on the same date as the compliant notice of appeal.

  • If applicant files a request for continued examination (RCE), an affidavit or other evidence under 37 CFR 41.33(d)(1), or an express abandonment after the filing of a notice of appeal and Pre-Appeal Brief Conference Request but prior to a decision on the request, will the Office continue to decide the request?

    No. The Office will terminate the panel's review of the request if the RCE, affidavit or other evidence under 37 CFR 41.33(d)(1), or express abandonment is filed prior to a decision by the panel.

  • If applicant files a notice of appeal without a Pre-Appeal Brief Conference Request, can applicant file a request to withdraw the first notice of appeal and then submit a second notice of appeal with a Pre-Appeal Brief Conference Request?

    No. Once applicant files a proper notice of appeal, applicant must perfect the appeal by filing the appeal brief within two months of the date of filing the notice of appeal under 37 CFR 41.31. Appellant cannot request withdrawal of a properly-filed notice of appeal for the purpose of requesting a Pre-Appeal Brief Conference.

  • If applicant files an amendment after appeal under 37 CFR 41.33(a) prior to the decision on the Pre-Appeal Brief Conference Request, will the Office continue to decide the Request?

    No. The Pre-Appeal Brief Conference Pilot Program provides that if applicant files an amendment after appeal under 37 CFR 41.33(a) prior to the decision by the panel, the Office will terminate the panel's review of the request.

  • If applicant files an amendment under 37 CFR 1.116 prior to submission of a proper notice of appeal and Pre-Appeal Brief Conference Request, will the Office consider the Pre-Appeal Brief Conference Request?

    Yes, if applicant submits an amendment under 37 CFR 1.116 prior to the date of the filing of the notice of appeal and Pre-Appeal Brief Conference Request, the Office will consider the Pre-Appeal Brief Conference Request, assuming that all of the other content requirements of the Pilot Program have been met.

  • How will the Office treat a notice of appeal, a request for a Pre-Appeal Brief Conference and an RCE that are all filed on the same date?

    If applicant files a notice of appeal, a Pre-Appeal Brief Conference Request, and an RCE all on the same date, the Office will not consider the notice of appeal or the Pre-Appeal Brief Conference Request. The filing of an RCE includes in this scenario the filing of a reply, thus the application would no longer be under rejection. Applicant cannot file an appeal in an application with an RCE until the application is under rejection, even if such application has been twice rejected prior to the RCE submission. See MPEP 1204. Accordingly, the request for a Pre-Appeal Brief Conference will be dismissed.

  • Can applicant make arguments concerning interpretation of the claims or prior art teachings in the Pre-Appeal Brief Conference Request?

    No. The request should be based on clear legal and factual deficiencies in the rejections. The program is not intended to review an interpretation of the claims or prior art teachings which are better suited for the traditional appeal process.

  • Can applicant file a Pre-Appeal Brief Conference Request to argue that the final rejection was premature?

    No. An applicant who wishes to argue that the final rejection was premature may petition pursuant to 37 CFR 1.181 since the appropriateness of a final rejection is a petitionable matter, not an appealable matter. See MPEP 706.07(c). The Pre-Appeal Brief Conference Pilot Program does not affect petitions to invoke the supervisory authority of the Director under 37 CFR 1.181 which are decided outside of the Pre-Appeal Brief Conference Program.

  • Can the five pages of arguments be single spaced?

    Yes. Presently, the applicant may single space the Pre-Appeal Brief Conference Request. However, applicant should be mindful of the requirements for papers that are to become part of the permanent United States Patent and Trademark Office records. Accordingly, the request must comply with the requirements of 37 CFR 1.52(a).

  • If applicant files five (5) pages of arguments and three pages of definitions defining words in the claims, will the request be deemed compliant for purposes of the five-page limit?

    No. The Office deems the definitional pages as arguments that count toward the five-page limit. Thus, such a request would be deemed non-compliant because it includes a total of eight pages.

  • If applicant provides five (5) pages of arguments and one page which is solely a signature page, will such submission be considered compliant as it relates to the five page limit?

    Yes. The sixth page that consists solely of the signature of the requester will not be counted toward the five-page limit and the request will be deemed compliant for purposes of the five-page limit.

  • If applicant files five (5) pages of arguments and a sixth page that includes conclusions, will the request be deemed compliant for purposes of the five-page limit?

    No. The Office deems conclusions as argumentative. Thus, a request that includes five pages of arguments and a sixth page that includes conclusions would be deemed non-compliant.

  • Does the request page count towards the five (5) page limit on arguments?

    No. The request form (PTO/SB/33) or an equivalent that doesn't also include argument does not count towards the five-page limit. Applicant may submit the one-page PTO/SB/33 form and up to five pages of arguments.

  • How would an applicant substantiate an assertion that the rejection is deficient?

    The request should specify:

    • clear errors in the examiner's rejections; or
    • the examiner's omissions of one or more essential elements needed for a prima facie rejection.

    For example, an applicant faced with an obviousness rejection should concisely point out (i.e., in no more than five pages) that a limitation is not met by a reference. Applicant can refer to arguments already of record rather than reasserting such arguments in the request. For example, applicant may point to a prior submission by paper number and/or date of submission and the relevant portions thereof (e.g., see response filed xx/xx/xx at pages 4 to 6).

  • The Pilot program announcement provides, "The Office is considering, as part of a more permanent implementation of the pre-appeal brief conference program, permitting applicants to file the request within two months (non-extendible) of the receipt of the notice of appeal for a fee...." See Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office67 (July 12, 2005). Has the Office adopted this procedure?

    No, this procedure has not been adopted. The Office will not decide a request for a Pre-Appeal Brief Conference that is filed after the date of a proper notice of appeal. The request and notice of appeal must be filed on the same date.

  • If applicant files the Pre-Appeal Brief Conference Request with a proper notice of appeal in one submission and then files an amendment after final in a separate submission on the same day, will the Office consider the amendment to "accompany the request" and thereby not comply with the content requirements?

    Yes. Any amendment pursuant to 37 CFR 1.116 that is filed on the same day as the Pre-Appeal Brief Conference Request, regardless of whether the amendment is filed together with the notice of appeal and request or in a separate submission, will be considered to accompany the request. Therefore, such a request will not meet the content requirements of the Pilot program.

  • Will the Office consider the Pre-Appeal Brief Conference Request filed on the same date as a proper notice of appeal if the request is submitted with an amendment after final?

    No. The Pilot program announcement provides that no after-final or proposed amendments may accompany the request. See Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005). In order to keep the issue(s) narrowly focused, the Office will dismiss any Pre-Appeal Brief Conference Request that is accompanied by an amendment under 37 CFR 1.116.

  • When is the proper time to file a notice of appeal and a Pre-Appeal Brief Conference Request?

    Pursuant to 37 CFR 41.31, an applicant having claims twice rejected may appeal from the decision of the examiner to the Board of Patent Appeals and Interferences (BPAI). Accordingly, if the claims have not been twice rejected, the notice of appeal would be premature and the Pre-Appeal Brief Conference Request would be dismissed.

    A claim may qualify as having been twice rejected if the claim was rejected in a parent application and then a claim was subsequently rejected in a continuing application, even if the claim was only rejected once in the continuing application. See Ex Parte Lemoine, 46 USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994).

  • Will the Office decide a request for Pre-Appeal Brief Conference that is filed after the date of a proper notice of appeal?

    No. The request and notice of appeal must be filed on the same date.

  • Who do I contact if I have questions on the Pre-Appeal Brief Conference Pilot Program?

    For questions concerning the Pre-Appeal Brief Conference Pilot Program, please contact Kery Fries, Senior Legal Advisor by telephone at 571-272-7757, or the Office of Patent Legal Administration by telephone at 571-272-7701; or by email to PatentPractice@uspto.gov .

  • How long will the Pre-Appeal Brief Conference Pilot Program continue to run?

    In July 2005, the Office established the Pre-Appeal Brief Conference Pilot Program to run for a period of six months. On January 10, 2006, the Office, citing promising results, extended the program indefinitely. See Extension of the Pilot Pre-Appeal Brief Conference Program, 1303 Off. Gaz. Pat. Office 21 (Feb. 7, 2006). The Office continues to review the results of the program to determine the overall effectiveness of the program as well as the formal requirements of the program.

  • Does this program apply to reexamination proceedings?

    No. The program is inapplicable to both inter partes and ex parte reexamination proceedings.

  • Can applicant file a Pre-Appeal Brief Conference Request in a reissue application?

    Yes, a Pre-Appeal Brief Conference Request may be filed in a reissue application.

  • Can the Pre-Appeal Brief Conference Request be filed via EFS-Web?

    Yes. A Pre-Appeal Brief Conference Request is not included on the list of submission types that cannot be filed using EFS-Web. See Legal Framework for EFS-Web, Section B1 and B2 of Federal Register Notice, Legal Framework for Electronic Filing System-Web (EFS-Web) 74 FR 55200 (October 27, 2009).

  • What are the requirements of a compliant Pre-Appeal Brief Conference Request?

    (1) File the request and accompanying arguments in a separate paper titled "Pre-Appeal Brief Request for Review" (Form PTO/SB/33 or equivalent).

    (2) Provide in five pages or less, concise, succinct and focused arguments for which the review is being requested.

    (3) File the request with the notice of appeal.

    (4) File the request without an amendment on same date

    (5) Address the notice of appeal and the request to one of the following:

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

    • Fax the notice of appeal and the request to the Central FAX Number (571 273-8300)

    • Hand carry the notice of appeal and the request to the
    • USPTO Customer Service Window, ATTN: Mail Stop AF
    • Randolph Building
    • 401 Dulany Street
    • Alexandria, VA 22314

    • Submit the notice of appeal and the request via EFS-Web.
  • What is the purpose of the Pre-Appeal Brief Conference Pilot Program?

    The purpose of the program is to spare applicant the added time and expense of preparing an appeal brief if a review panel determines an application is not in condition for appeal. In proper situations, it can save both the resources of the applicant and the Office.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.

  • 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.