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Best Practices - Suggestions and Tips

Avoid The Most Common Mistakes Made By Practitioners:

Andrew Faile,
Director TC 2600

Avoid Mistakes Throughout Prosecution

  • Tips and Suggestions
    • Preparing the Application
    • Filing the Application
    • Avoiding Publication Pitfalls
    • Examination Processing Tips
    • Post Allowance Tips
    • Best Practice Tips (see Appendix)

Preparing the Application

  • Avoid submitting an application in the European problem/solution format.
    • Format the application according to US rules and procedures. See MPEP § 608
  • Avoid including multiple dependent claims that depend from other multiple dependent claims
    • Craft claims according to US practice, see MPEP § 608.01(n)
  • Avoid including “Use” claims
    • Craft claims according to US practice, see MPEP § 608.01(k)

Pre-Examination Tips

Forms

Application Data Sheets

  • Do use an Application Data Sheet (ADS), although an ADS is not required. Customers using an ADS can expect two advantages when applying for a patent:
    1. Improved accuracy of filing receipts.
    2. Accurately recorded application data.
  • Use of a supplemental ADS is possible even though no original ADS was submitted on filing.
  • The following information can be supplied on an ADS:
    • Application Information
    • Applicant Information
    • Correspondence Information
    • Representative Information
    • Domestic Priority Information
    • Foreign Priority Information
    • Assignment Information

Preliminary Amendments In New Applications

  • Avoid submitting Preliminary Amendments on filing
  • A substitute specification will be required if a preliminary amendment present on filing makes changes to the specification, except for:
    • Changes to title, abstract, claims or addition of benefit claim information to the specification
    • See the notice “Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application,” 1300 Off. Gaz. Pat. Office 69 (November 8, 2005), available at:
  • http://www.uspto.gov/web/offices/com/sol/og/2005/week45/patrevs.htm

Preliminary Amendments in Continuations and Divisionals

  • Avoid submitting Preliminary Amendments on filing a Continuation or Divisional
  • Avoid Preliminary Amendments that cancel all the claims and add new ones

Filing the Application

  • Select a method of filing the application
    1. Accelerated Examination
    2. EFS-Web
    3. Traditional Mail Route
  • Accelerated Examination Common Failings
    • Failure to provide the text search logic. A mere listing of terms will not suffice.
    • Failure to search the claimed invention. The petition for accelerated examination may be dismissed if the search is not commensurate in scope with the claims.
    • Failure to show support in the specification and/or drawings for each limitation of each claim.
    • Failure to show support in the specification and/or drawings for each limitation of each claim for every document whose benefit is claimed.
    • Failure to specifically identify the limitations in each claim that are disclosed in each reference.

EFS-Web Filing

  • Avoid coding (identifying) a Request for Continued Examination (RCE) as an “Amendment” when filing an RCE
  • Avoid identifying papers after the initial filing as “new”
  • Avoid common PCT filing mistakes
  • Avoid filing color images or images that have a resolution higher than 300x300 dots per inch (dpi)

Avoid Publication Pitfalls

Nonpublication Requests

  • Avoid inconspicuous requests for nonpublication.
  • Publication will generally include all preliminary amendments submitted in time to be included in the publication.
  • If amendments to the specification are desired to be included in publication, submit a substitute specification.

Publication Corrections

  • Practitioners must include the assignment information in the transmittal letter or ADS.
  • Avoid misspelling the names of inventors or assignees.
  • Review the filing receipt promptly so that corrections can be requested before publication or export of data for publication.
  • Avoid filing requests for Corrected Publication 37 CFR § 1.221(b) that fail to recite material errors.

Examination Processing Tips

General Prosecution Advice

  • Amendments to the claims and/or specification should be accompanied by a written statement indicating specific support for the change. If the support is implicit, an explanation is beneficial.
  • In response to restriction requirements, where inventions are indeed patentably indistinct, applicants should present arguments to that end.
  • Read the entire prior art reference cited by the examiner, not just the part relied upon by the examiner in the rejection.

Pre-Appeal Brief Conference

  • Avoid sending the request separate from the Notice of Appeal.
  • Avoid making a request when there is an outstanding after-final amendment.
  • Avoid attaching more than five pages to the cover form.
  • Avoid sending in a supplemental request.
  • Avoid paying a second Notice of Appeal fee in the application.

Filing of Continuation-in-Part (CIP) Applications

  • Consider prosecuting an improved CIP invention independently of the prior invention:
    • File, if need be, a continuation only to the original invention, or take an appeal on the original invention, and
      • File a new application, rather than a CIP, for only the new invention:
        • without a benefit claim (35 U.S.C. §120, 37 CFR § 1.78) to the initial application, and
        • therefore without shortening the patent term of the initial invention if it were to be included in the CIP application, as
        • any benefit claim in a CIP cannot protect the new invention.

Post Allowance Tips

Issue Fee Payments

  • Avoid filing an Information Disclosure Statement (IDS) after payment of the issue fee.
    • File an IDS filed after payment of the issue fee with a Petition for Withdrawal from Issue (37 CFR 1.313(c)) and an RCE (37 CFR § 1.114). Otherwise, the IDS will be placed in the file and the cited documents will not be considered by the examiner.
  • Avoid delays in paying the issue fee.
    • The issue fee payment may be submitted via facsimile to the Office of Patent Publications ((571) 273-2885) or EFS-Web to ensure the payment is received within the non-extendable time period set forth in the Notice of Allowance and Fee(s) Due (PTOL-85).

Withdrawal from Issue

  • Petitions to Withdraw from Issue may be hand carried or sent via facsimile to the Office of Petitions.
    • Hand carries should be brought to the security guard station of the Madison West building, 600 Dulany Street, Alexandria VA 22314.
    • The facsimile number for the Office of Petitions is (571) 273-0025.
  • Note: All other types of petitions must be directed to the Central FAX ((571) 273-8300).

Thank You.

APPENDIX BEST PRACTICES

Best Practices

Use of S-signatures (37 CFR § 1.4(c)(2))

  • A practitioner creates a document and S-signature signs it on his/her PC. The practitioner can then:
    • Facsimile transmit the document directly from the PC to the Office; or
    • Print the document and then facsimile transmit, mail, or hand-carry the document to the Office.
  • An affidavit under 37 CFR § 1.132 is S-signed by the party making the affidavit, the S-signed affidavit is then:
    • Electronically sent to the practitioner, e.g., via an e-mail. The practitioner can then facsimile transmit, mail or hand-carry the S-signature signed document to the Office.
  • Power of Attorney Tips:
    • Do direct a Power of Attorney to the Attorneys Associated with the Customer Number to the Customer Number
    • Do provide a separate Power of Attorney and a separate Oath/Declaration
  • Priority Document Exchange Tips
    • Do provide a valid power of attorney with a submission for permission to access
    • Only the designated attorney or agent may grant permission to access.

Fee Payment Tips

  • Avoid placing a stop payment on a check for USPTO services or to circumvent the rules of practice. This action is not appropriate.
    • Request a refund (37 CFR § 1.26) where fees were paid by mistake or in excess of the amount required.
  • Avoid drafting a check to the USPTO for services on an account with insufficient funds.
    • Ensure that the account from which the check is drawn contains sufficient funds prior to submitting the check to the USPTO.

Fee Payment Tips

  • Do use a Deposit Account Number on a transmittal form authorizing payment
    • Do not use a Customer Number to authorize payment of fees.
  • Be clear with payment authorization statements.
    • Avoid contradictory statements on payment

Maintenance Fees/Deposit Accounts

  • Maintenance fees and replenishing of deposit accounts at the USPTO can be done online: https://ramps.uspto.gov/eram
  • Inquiries related to deposit accounts, maintenance fees and refunds may be directed to the Office of Finance (571) 272-6500.

Prosecution Tips

  • Proofread claims for clarity and precision
  • Present all cogent arguments and evidence before final rejection
  • If the examiner is believed to be ignoring a claim limitation, a personal or telephonic interview may facilitate the prosecution to completion.
  • Don’t initiate a response on the absolute last day of the statutory period, if possible.
  • Don’t personally attack the Examiner in a response to Office Action.
  • Follow the chain of command for assistance:
    • First, call the Examiner.
    • If he or she is non-responsive or unavailable, contact the Supervisor.
    • If the issue is still not resolved, contact the Technology Center Director.

Further Information

Helpful Web Pages:
United States Patent and Trademark Office
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Last Modified: 7/4/2009 6:24:01 PM