Best Practices - Suggestions and Tips
Avoid The Most Common Mistakes Made By Practitioners:
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
- 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)
- Do use USPTO forms without altering the language.
- Do not use a combined declaration and power of attorney form.
- USPTO forms can be found at: http://www.uspto.gov/web/forms/index.xml
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:
- Improved accuracy of filing receipts.
- 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:
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
- Accelerated Examination
- 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.
- 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
- 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.
- 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
- 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.
- File a new application, rather than a CIP, for only the new invention:
- File, if need be, a continuation only to the original invention, or take an appeal on the original invention, and
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).
APPENDIX 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
- 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
- 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.
- 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 InformationHelpful Web Pages:
- Notices, Recent Patent-Related – a very current list of all Federal Register, Official Gazette and pre-Official Gazette notices, and certain Office memoranda: http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
- Forms Page – current USPTO forms available for use by the Public: http://www.uspto.gov/web/forms/index.xml
- Manual of Patent Examining Procedure (MPEP): http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
- Mailing Addresses and Mail Stops: http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm
- Facsimile Numbers: http://www.uspto.gov/web/offices/com/sol/og/2005/week42/patcorr.htm
- USPTO Glossary: http://www.uspto.gov/main/glossary/index.html