Changes to Support Implementation of the USPTO 21St Century Strategic Plan, Final Rule 69 FR 56481 (September 21, 2004) 1287 Off. Gaz. Pat. Office 67 (October 12, 2004)

Office of Patent Legal Administration (OPLA)
(571) 272-7701
Deputy Commissioner for Patent Examination Policy (DCPEP)
PatentPractice@uspto.gov

January 1, 2005

Significant Changes

§ 1.4 Signatures (adding Electronic and S-signatures)
§ 1.6 Submission of Drawing by Facsimile
§ 1.17 Petition Fees
§ 1.19 Document Supply Fees
§ 1.27 Small Entity Status
§ 1.52 Font Sizes, Compact Disc Specifications
§ 1.57 (New) Incorporation by Reference
§§ 1.58, 1.83 Tables, Sequence Listings
§ 1.76 Application Data Sheet
§ 1.78 Benefit Claims
§ 1.84 Drawings
§§ 1.91, 1.94 Models, Exhibits, Specimens
§ 1.98 Information Disclosure Statements
§ 1.102 Advancement of Examination
§ 1.105 Requirements for Information
§ 1.111 Supplemental Replies
§ 1.115 Preliminary Amendments
§§ 1.175, 1.178 Reissue Applications
§ 1.215 Eighteen Month Publication
§ 1.291 Protests

Effective Dates

There are three effective dates based on the September 21, 2004 date of publication of the final rule in the Federal Register, as follows:

1. September 21, 2004 - The changes to 37 CFR §§ 1.4, 1.6, 1.10, 1.27, 1.57(a)(1) & (a)(2), 1.78, 1.84, 1.115, 1.137, 1.178, and 1.311.
2. October 21, 2004 - The changes to 37 CFR §§ 1.8, 1.52, 1.57 (b) – (g),1.58, 1.63, 1.69, 1.76, 1.83, 1.85, 1.91, 1.94, 1.98, 1.102, 1.105, 1.111, 1.121, 1.131, 1.165, 1.173, 1.175, 1.179, 1.215, 1.324, 10.18 and 104.3.
3. November 22, 2004 - The changes to 37 CFR §§ 1.12, 1.14, 1.17, 1.19, 1.47, 1.53, 1.57(a)(3), 1.59, 1.84(a)(2), 1.103, 1.136, 1.182, 1.183, 1.291, 1.295, 1.296, 1.377, 1.378, 1.550, 1.741, 1.956, 5.12, 5.15, 5.25 and 41.20.

3 Types of Permitted Signatures37 CFR 1.4(d)

1. Handwritten (personally signed) signatures are now specifically provided for in § 1.4(d)(1).

The following additional types of signature are now acceptable:

1. S-signatures (§ 1.4(d)(2)):
   • Example for signing applicant: /James Jones/ James T. Jones
2. Electronic Filing System (EFS) character coded (electronic) signatures for correspondence transmitted via EFS (§1.4(d)(3))
   • Note: electronic signatures in EFS must be completed by filling in the appropriate EFS menu
   • EFS signatures have previously been acceptable under a waiver.

Note: Samples of acceptable signatures for applicants and registered practitioners are posted on the Office’s web site.

S-Signatures, 37 CFR 1.4(d)(2)Definition and Uses

An S-Signature is any signature between forward slashes that is not a handwritten (§§ 1.4(d)(1) or (e)) or an EFS character coded signature(§ 1.4(d)(3)).

• It is inserted between the forward slashes by electronic (e.g., a word processor) or mechanical means.

S-Signatures may be used to sign all correspondence unless otherwise explicitly excluded (e.g., when an original handwritten or “wet” signature is required, such as is set forth in 37 CFR 1.4(e)).

S-Signatures may be used on documents that are either:

1. Mailed or hand (courier) delivered,
2. Transmitted by facsimile, or
3. Submitted via EFS directly as an EFS Tagged Image File Format (TIFF) attachment (e.g., scanned image), to the Office.

S-Signatures – 5 Requirements37 CFR 1.4(d)(2)

1. The S-signature must consist only of letters (including Kanji, etc.), or Arabic numbers, or both, and appropriate spaces, commas, periods, apostrophes, or hyphens for punctuation.
2. The S-signature must be placed between forward slashes.
3. The person signing must insert his or her own signature, § 1.4(d)(2)(i)
   • Only the signer can insert their own signature:
     • a secretary, paralegal, etc., is not permitted to sign/ insert another person’s signature, e.g., a practitioner’s signature, and
     • a practitioner is not permitted to sign/insert an inventor’s signature.

       Note: Per the rule itself, the person inserting a signature certifies that the signature is his or her own signature (§ 1.4(d)(4)(ii)(B)).

4. The name of the person signing must be printed or typed immediately adjacent (i.e, below, above, or beside) to the S-signature, and be reasonably specific, so the identity of the signer can be readily recognized.

   The name of the person signing may be inserted by someone other than the person signing, but the person signing must personally insert the S-Signature.

   • For example, a secretary, paralegal, etc., may type the name of the person signing at any time (e.g., before or after the person signing inserts his or her own signature).

5. A registered practitioner may S-sign but his or her registration number is required, either as part of the S-signature, or immediately below or adjacent to the signature.
   • For example: /John Attorney Reg. #99999/

     John Attorney

Examples Where S-Signatures Can Be Used

• 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 § 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.

  Note: Per the rule itself, the person submitting a document with an S-Signature or EFS character coded signature is certifying that they have a reasonable belief that the person whose signature is present on the document was inserted by that person § 1.4(d)(ii)(A).

EFS Character Coded Signatures, 37 CFR 1.4(d)(3)

• EFS Character Coded signatures must consist only of English letters, Arabic numbers, or both, with punctuation typed into an EFS menu.(§ 1.4(d)(3)).
• The person signing must personally insert his/her electronic signature between forward slashes as with S-signatures but:
  • The name of the signer is not required in the rule because it is a required EFS software input.
  • The EFS software also determines the location of the signer’s printed name and registration number, if applicable.
• The following correspondence filed via EFS as an EXtensible Markup Language (XML) document may include an EFS character coded signature:
  • new applications,
  • assignments,
  • amended biotech listings, and
  • e-IDS’s.

Examples of EFS Signatures in IFW

• How correspondence created using, and transmitted via, EFS with a character coded signature appears in IFW
  1. "Electronic Version” and “Stylesheet Version” appear in upper left portion of document indicating the version of EFS software used

     [Alternative Text: Image of a document containing an "Electronic Version" and a Stylesheet Version."]

  2. Example: The character coded signature is labeled: “Signature” in declaration of this EFS version:

     [Alternative text: Image of the character coded signature labeled as "Signature."]

Name Requirement for S-Signatures and EFS Character Coded Signatures

• There is no requirement that the signer’s actual, full or legal name be used.
  • It is strongly suggested that the full name be used;
  • The typed or presented name below the signature must be reasonably specific enough so that the identity of the signer can be readily recognized (37 CFR 1.4(d)(2)(iii)(B)).
• Titles may be included as part of the signature.

Certification Requirements 37 CFR 1.4(d)(4)

Certification Requirement (§ 1.4(d)(4)(ii)(A))

1. For another’s signature: A person submitting a document signed by another under § 1.4(d)(2) or (d)(3):
   1. is obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted that signature, and
   2. should retain evidence of authenticity of the signature.
2. For your own signature: The person inserting a signature under § 1.4(d)(2) or (d)(3) in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.

Violations of the signature certifications may result in the imposition of sanctions under §§ 10.18(c) and (d).

Questionable Signatures

• Ratification, confirmation or evidence of authenticity of a signature may be required where the Office has:
  • Reasonable doubt as to to its authenticity,
  • Where the signature and typed or printed name do not clearly identify the person signing.
• The failure to follow the S-signature format and content requirements will usually be treated as a bona fide attempt, but will cause the paper to be treated as unsigned with differing results, e.g.:
  • Amendments would receive a new 1-month time period
  • § 1.63 declarations, would receive a two month time period and a surcharge may be imposed.

Drawings May Be Submitted by Facsimile - 37 CFR 1.6

• Effective date: September 21, 2004
• Black and white drawings will be permitted to be transmitted to the Office by facsimile in all applications other than original filings:
  • Codified previously accepted practice
  • Color photographs or color drawings must continue to be hand-carried or mailed to the Office instead of being sent by facsimile; and
  • Black and white photographs or drawings with fine details should not be sent by facsimile:
    • Transmission via facsimile may degrade the quality of the drawings. The Office will generally print what is filed.

Petition Fees37 CFR 1.17

• Petition fees have been adjusted to more accurately reflect the Office’s current cost of treating petitions pursuant to 35 U.S.C. § 41(d).
• Three levels of petitions fees are provided:
  1. $130 petition fee retained in § 1.17(h);
     • e.g., § 1.102(d) to make an application special,
  2. $200 petition fee created in § 1.17(g);
     • e.g., § 1.47 nonsigning inventor and § 1.59 expungement, and
  3. $400 petition fee created in § 1.17(f).
     • e.g., § 1.53(e) to accord a filing date, § 1.182 for questions not specifically provided for, and § 1.183 for waiver of a requirement of the rules.
• New form PTO/SB/17p is available on the USPTO forms web page.

Document Supply Fees37 CFR 1.19

• Copies of files and/or documents may be provided in paper or electronic form.
• Electronic form may be:
  • Compact disc (CD);
  • Transmitted over Internet; or
  • Another electronic medium as designated by the Director.
• For a copy of an application file wrapper and contents, the fee will be:
  • $200 – if provided on paper (up to 400 pages); or
  • $55 – if provided on one compact disc or other electronic form.
• The seven-day requirement for processing copy requests is removed.

Small Entity Status37 CFR 1.27

• Impact of a Security Interest Held by a Large Entity: A security interest in an application or patent held by a large entity is not a sufficient interest to bar entitlement to small entity status so long as the security interest is not triggered. (§ 1.27(a)(5)).
• Impact of SBA Requirements on Foreign Applicants: Certain Small Business Administration (SBA) requirements relating to location in the U.S. or making a significant contribution to the U.S. economy do not bar entitlement to small entity status for patent applicants. (§ 1.27(a)(2)(ii)).

Font Sizes 37 CFR 1.52(b)

• Recommended Font Size: The rule is revised to recommend that the preferred font size of text is 12 points, which is identified in the preamble discussion as approximately 0.166 inches or 0.422 cm high (§ 1.52(b)(2)(ii)). See also § 1.58(c).

Compact Disc Specifications 37 CFR 1.52(e)

• The requirements permitting tables on compact disc are changed:
  • A table of any size may be placed on a compact disc if the total number of pages of all the tables in an application exceeds 100 pages in length (or any single table more than 50 pages in length, which practice is unchanged) (§ 1.52(e)(1)(iii));
  • What constitutes a table page is clarified to be a page printed on paper pursuant to §§ 1.52(b) and 1.58(c) of this section (§ 1.52(e)(1)(iii));
  • CD’s must be finalized to assure archival nature of discs. Finalized means that the compact discs are closed to adding further data (§ 1.52(e)(3)(i));
  • Landscape orientation should be indicated on the transmittal letter: It is clarified that landscape orientation of a table is an example of special information needed to interpret that table and such information should be provided on the transmittal letter (§ 1.52(e)(3)(ii)).

Incorporation by Reference 37 CFR § 1.57(New Rule)

• 37 CFR § 1.57 is added to provide for incorporation by reference.
  1. Section 1.57(a) is added so a priority/benefit claim can be considered an incorporation by reference of a prior-filed application as to inadvertently omitted material only.
  2. Sections 1.57(b) through (e) treat incorporation by reference of essential and nonessential material into an application.
  3. Section 1.57(f) covers how material incorporated by reference is inserted, by amendment into the specification or drawings of an application.
  4. Section 1.57(g) codifies that a noncompliant incorporation by reference is not effective, and sets forth the requirements for correcting the incorporation by reference to be compliant.

Priority/Benefit Claim can be Considered an Incorporation by Reference of a Prior-Filed Application - 37 CFR 1.57(a) (New Rule)

• Priority/benefit claims will now act as an incorporation by reference of a prior-filed application as to inadvertently omitted material only. 37 CFR 1.57(a).
• Applies to applications filed on or after September 21, 2004 (effective date for 1.57(a)):
  • The application which inadvertently omitted material must be filed on or after the effective date
  • but the prior-filed application being relied upon for the omitted material can be filed prior to the effective date.
• Prior practice: Applicant could only add to the current application material found in a prior application if the prior application was expressly incorporated by reference.
  • Material found in a parent application may now be added under § 1.57(a) (limited to inadvertent omissions) or under express incorporation by reference provision, if present.

Priority/Benefit Claim can be Considered an Incorporation by Reference of a Prior-Filed Application - 37 CFR 1.57(a) (Requirements)

• Requirements for corrective amendment under § 1.57(a):
• All or a portion of the specification or drawing(s) from a prior-filed application may be added by corrective amendment to a later-filed application claiming the priority/benefit of the prior-filed application under § 1.55 or § 1.78, where:
  1. The claim was present on the filing date of the later-filed application;
  2. The material to be added was inadvertently omitted from the later-filed application; and
  3. The omitted portion is completely contained in the prior-filed application.
• If the application is not entitled to a filing date, the corrective amendment must be by way of petition. 37 CFR 1.57(a)(3).
• Mere reference to another co-pending application is not a benefit claim (e.g., a statement that prior patent application 09/123456 is copending with the current application), and it will not be treated as an incorporation by reference of any subject matter found therein.
• Additional Requirements for Corrective Amendment: Along with the amendment to include inadvertently omitted material, applicant must submit:
  1. A copy of the prior application, except where the prior application is filed under 35 U.S.C. 111;
  2. An English language translation, if the prior application is in a foreign language; and
  3. Identification of where in the prior application the omitted portion to be added to the later application can be found.
• A statement that the omission was inadvertent is not required.
  • Any amendment to add the omitted material would constitute a certification under § 10.18(b).
• Timeliness Requirement for corrective amendment:
  1. If noted by OIPE or the examiner: within any time period set by the Office,
  2. If noted by applicant: not later than close of prosecution (as defined by § 1.114(b)) or the abandonment of the application, whichever occurs earlier.
• Any amendment to an international application is effective only as to the U.S., and shall not affect the international filing date of the application.

Incorporation by Reference of Essential and Nonessential Material 37 CFR 1.57(b)-(g) (New)

• Sections 1.57(b)-(g) generally codified the existing incorporation by reference practice set forth in MPEP 608.01(p)(8th Ed., rev 2, May 2004) with some changes.
  • Definitions of essential and non-essential material have been added.
• The new provisions in § 1.57(b)-(g) apply to applications filed on or after October 21, 2004
• Clear intent and identification still required. To be an effective incorporation by reference, it must be expressly presented in the specification, § 1.57(b), as follows:
  1. using the root words: “incorporate” and “reference” is now required, and
  2. the referenced patent, application, or publication must be clearly identified.

Incorporation by Reference of Essential Material 37 CFR 1.57(c) (New)

• Essential material is material to support claimed invention requirements of 35 U.S.C. 112, paragraphs 1, 2 and 6. § 1.57(c)(1)-(3)
• Essential Material may be incorporated by reference only to:
  • U.S. patents or U.S. patent application publications, but the referenced patent or publication may not itself incorporate such essential material. § 1.57(c)
• Pending unpublished U.S. applications:
  • Essential material may no longer be incorporated by reference to an unpublished pending application.
    • The practice of incorporating by reference essential material found in unpublished applications in which the issue fee has been paid has been eliminated.

Incorporation by Reference of Essential and Nonessential Material 37 CFR 1.57(d),(e) & (g) (New)

• Nonessential material may be incorporated by reference to:
• U.S. and foreign patents, publications (including U.S. & foreign application publications, and non-patent literature), and commonly owned U.S. applications. § 1.57(d).
• Material may not be incorporated using hyperlinks or other form of browser executable codes.
  Examiner may require submission of a copy of the material incorporated even if properly incorporated. § 1.57(e)

Incorporation by Reference of Essential and Nonessential Material 37 CFR 1.57(f) & (g) (New)

• An incorporation by reference that does not comply with §1.57(b), (c), or (d) is not effective.
• There are two correction options when the application as filed clearly conveys an intent to incorporate specific material by reference:
  • but the root words are not used, and/or
  • the referenced document is sufficiently described but not clearly identified or
  • the material being incorporated is essential material but is found in certain documents (e.g., pending U.S. applications, foreign patent documents and NPL).
• Correction of an ineffective incorporation by reference:
  Option 1: An amendment may be made a) to insert the required root words, and/or b) to clearly identify the referenced patent, U.S. application publication, or if nonessential material, the application or other publication. See § 1.57(g).

  Example: Given language “the disclosure of application attorney docket number 1234.5 entitled “Glow in the Dark Tennis Ball” to Jones, filed Jan. 1, 2003 is hereby incorporated by reference.”

  A permitted amendment would be: “the disclosure of U.S. patent 5,555,555 entitled “Glow in the Dark Tennis Ball” to Jones is hereby incorporated by reference.”

  Note: An application number (if non-essential material) may be used to replace “attorney docket number 1234.5.”

  Option 2: An amendment may be made inserting the material intended to be incorporated into the specification. § 1.57(f).

  • This option could be used for adding essential material found in certain documents (e.g., pending U.S. applications, foreign patent documents and NPL).
    • Where incorporation by reference would be improper
  • This option could additionally be used for adding nonessential material.
  • An amendment to include the incorporated material must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter
    • This requirement is a change from previous practice.
    • An affidavit or declaration (that the amendatory material consists of the same material incorporated by reference in the referencing application) is no longer required. Form Par. 6.19 will be updated consistent with § 1.57(f).

Incorporation by Reference of Essential and Nonessential Material 37 CFR 1.57(g) (New)

• If an incorporation by reference of essential material is ineffective, such as incorporation from a pending unpublished application, (which is no longer permitted), a rejection under 35 USC 112 paragraphs 1, 2 or 6 will be made, as appropriate.
• Applicants should not request to hold a correction of an incorporation by reference in abeyance since such a request to hold a correction in abeyance is no longer permitted.
• Any applicant initiated correction must be made no later than close of prosecution as defined in § 1.114(b) or abandonment, whichever is earlier. § 1.57(g).

Tables, Sequence Listings, & Font Sizes, 37 CFR 1.58 and 1.83

• Tables and Sequence Listings included in the specification must not be duplicated in the drawings (§§ 1.58(a), 1.83):
  • The prohibition does not apply to applications filed under 35 USC 371.
• Tables filed in electronic form must be encoded to visually maintain the relational information they convey when the file is opened for viewing in the Office (e.g., rows and columns) (§ 1.58(b)).
• Recommended Font Size: The rule is revised to recommend that the preferred font size is 12, which is approximately 0.166 inches or 0.422 cm high (§ 1.58(c)). See also § 1.52(b)(2)(ii).

Application Data Sheet (ADS)37 CFR 1.76

• ADS, and any supplemental ADS, must have:
  • The appropriate title (i.e., “Application Data Sheet” or “Supplemental Application Data Sheet”);
  • All seven section headings;
  • The appropriate data for each section; and
  • Additionally, for supplemental ADSs, identification of what is being corrected, added, or deleted.
• A supplemental ADS must be a complete replacement ADS showing the changes using underlining and strike-through.
  • Submitting only the changes or new information in a supplemental ADS is no longer permitted.

Application Data Sheet (ADS)37 CFR 1.76

• If an ADS is inconsistent with information provided in another document that was submitted at the same time or prior to the ADS submission, the ADS will control:
  • e.g., the correspondence address designated in an ADS is used instead of the address in a transmittal letter that was submitted prior to or with the ADS,
  • but not for inventorship or citizenship. (§ 1.76(d)(1) and (2))
• The option of utilizing a § 1.63 oath or declaration to correct captured bibliographic data has been eliminated (§ 1.76(d)(4)).

Domestic Benefit Claims & Double Patenting Rejections 37 CFR 1.78

• Effective Date: September 21, 2004
• Former practice required a single sentence to identify benefit claims to prior U.S. applications. This is still permitted.
• Multiple Sentences Permitted: multiple sentences forming a continuous string starting with the first sentence of the specification are now permitted to identify benefit claims to prior U.S. applications.
  • The multiple sentences must begin as the first sentence after the title, and the second, or any additional, sentence including a benefit claim must follow the first sentence and not be separated from the first sentence by any other sentence not making a benefit claim.
• Double Patenting Rejections: the rule clarifies that the prior art exclusion under 35 U.S.C. 103(c) (common assignee) does not preclude a double patenting rejection. § 1.78(c).
  • Applicants responsibility has not changed. They should still disclose all related applications where a double patenting rejection can be made, and should disclose any related application(s) if there is any doubt. 37 CFR 1.56.

Drawings 37 CFR 1.84

• Codification of a previous OG Notice to remove the requirement for black and white copies of color drawings and photos.
• Adds recommendation that original drawings include identification labels, and if labels are provided they must be placed on (§ 1.84(c)):
  • front of drawing, and
  • within the top margin.
• Identification Labels: To be consistent with § 1.121(d), drawings submitted in an amendment must be identified as either:
  • “ Replacement Sheet” (amended drawing),
  • “ New Sheet,” or
  • “ Annotated Sheet” (for a marked-up copy).

Models, Exhibits, and Specimens 37 CFR 1.91 and 1.94

• Effective Date: October 21, 2004
• Photos Now Required: Physical models or exhibits that the Office cannot scan must be accompanied by photographs substantially in compliance with § 1.84, showing adequate multiple views of material features.
• Artifact File: Models, exhibits or specimens that cannot be scanned for IFW, will be stored in artifact folders until they can be disposed of.
• Applicant can be required to arrange for the return of their model, exhibit or specimen upon notification at applicant’s expense when they are no longer necessary for the conduct of business before the Office. Retention by applicant is ordinarily required for the enforceable life of any patent.
  The Office will dispose of perishables without notice to the applicant unless applicant notifies the Office upon submission that a return is desired and promptly makes arrangements for their return upon notification by the Office.

Information Disclosure Statements37 CFR 1.98 - No Copies Required

• Applies to pending applications.
• Per § 1.98(a)(2), a copy of each cited U.S. patent and U.S. patent application publication is no longer required to be filed with an IDS. The filing date of the application being examined is no longer relevant.
  • Strategic Plan Final Rule, effective October 21, 2004
  • This rule expands on Information Disclosure Statements May Be Filed Without Copies of U.S. patents and Published Applications in Patent Applications filed after June 30, 2003, 1273 Off. Gaz. Pat. Office 55 (August 5, 2003).
• Per waiver in OG Notice, a copy of each cited pending U.S. patent application, or portion of the application which caused it to be listed, is no longer required to be filed with an IDS if:
  1. The cited pending application is stored in the IFW system; and
  2. The cited information is limited to the specification, including the claims, and drawings, of the cited pending U.S. application, even if it is stored in an artifact folder. See examples on the next slide.

See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 Off. Gaz. Pat. Office 163 (October 19, 2004)(signed Sept. 21, 2004).

Information Disclosure Statements37 CFR 1.98 – OG Waiver, Artifacts

Examples when a pending U.S. patent application is cited in an IDS

Example 1: If the cited information from a pending application in IFW is a sequence listing or large table stored on a CD that is part of the specification, a copy of the sequence listing or table stored on a CD is not required. Examiner may order the CD from the artifact folder of the cited pending application when considering the IDS.

Example 2: If the cited information from the pending application is an Office action, affidavit, exhibit, or IDS filed in the cited pending U.S. application which is not part of the specification, a copy of the cited paper is required.

• Applicant should cite the pending U.S. application in the “Non Patent Literature Documents” section of the PTO/SB/08B and provide a copy of the paper.

Information Disclosure Statements 37 CFR 1.98 - Copy Requirements

• Applicants are still required to submit a copy of:
  1. Each cited foreign patent document;
  2. Each cited non-patent literature publication, or the portion therein which caused it to be listed;
  3. Each cited U.S. pending application that is not stored in IFW;
  4. All information cited (e.g., an affidavit or Office action), other than the specification, including claims and drawings, of a pending U.S. application; and
  5. All other cited information or the portion which caused it to be listed.

Information Disclosure Statements37 CFR 1.98 - Electronic Submissions

• Recommendation: Applicants are encouraged to file an e-IDS via EFS for U.S. patents and patent application publications rather than a paper IDS form (1449 or PTO/SB/08) listing the citations.
• A paper IDS may include a compact disk (CD) that has tables, sequence listings, or program listings. See 37 CFR 1.52(e).
• A CD cannot be used to submit an IDS listing, nor copies of patents and publications.
• A large number of citations of U.S. patents, U.S. patent application publications and U.S. patent applications may trigger an Office requirement for applicant to supply paper copies for all citations. See preamble discussion in Final Rule notice.

Information Disclosure Statements 37 CFR 1.98 - Format Requirements

• Additional format requirements for the listing of cited prior art documents:
  1. A separate section for citations of U.S. patents and U.S. patent application publications;
  2. The application number of the application in which the IDS is being submitted on each page of the listing;
  3. A column that provides a blank space next to each citation for the examiner’s initials when the examiner considers the cited document; and
  4. A heading on the listing that clearly indicates that the list is an Information Disclosure Statement (e.g., not a citation of prior art under § 1.99 or § 1.291).
• Applicants will generally comply with the format requirements if they use current forms PTO/SB08A & B (Rev. 08-03 or later).
• An IDS list that is, or includes, a copy of a previously initialed PTO-1449 or PTO/SB/08 form from another application may no longer be acceptable
  • it may not have a blank space for the examiner to initial and
  • the correct application number may not be on each page of the list.
• If the IDS is not in compliance with the format requirements, it may not be considered.

Advancement of Examination 37 CFR 1.102

• A petition without fee to make an application special based on an invention’s ability to counter terrorism has been established. § 1.102(c).
• There must be a good faith effort to determine that the claimed invention is in fact materially directed to countering terrorism. §§ 1.56 and 10.18(b).

Note: Where the disclosure of the application is not clear on its face that the claimed invention is materially directed to countering terrorism, an explanatory statement to that effect is required. MPEP 708.02, XI.

Requirements for Information 37 CFR 1.105

• Section 1.105 has been amended to additionally provide for requiring factual information (not opinions nor the level of ordinary skill in the art) via:
  • Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
  • Stipulations as to facts with which the applicant may agree or disagree.
• The types of factual information concerning:
  • The related art;
  • The disclosure;
  • Claimed subject matter;
  • Other factual information pertinent to patentability; or
  • The accuracy of the examiner’s stated interpretation of such items.
• Specific examples of applicant’s actual knowledge:
  1. The common technical features shared among all claims or admission that certain groups of claims do not share any common technical features;
  2. The support found in the disclosure for means or step plus function limitation recited in the claim (the corresponding structure, material or acts) (35 U.S.C. 112, 6th paragraph);
  3. The portions of the disclosure that provide the written description and enablement support for specific claim elements;
  4. The intended meaning of claim limitations or terms, such as what teachings in the prior art would be covered and which dictionary definitions would be appropriate.
  5. The portions of each claim that correspond to any admitted prior art of the specification;
  6. The specific utility provided by the claimed subject matter on a claim by claim basis;
  7. Whether a dependent claim element is known in the prior art based on the examiner having a reasonable basis for believing so;
  8. The support for added limitations in an amended claim; and
  9. The facts related to public use or sale situations.
• The Office may accept as a complete reply to a requirement for factual information that the information is unknown or is not readily available, without further specification as to which of the two is relied upon:
  • Such reply may only be used after applicant has made a good faith attempt to obtain the information based on reasonable inquiry; and
  • Such reply may affect the prosecution of the application, e.g.:
    • Where the inquiry is in regard to correlation of structure set forth in the specification with a claim under 35 U.S.C. 112, paragraph 6, a reply that the correlation in the specification is unknown may cause, e.g., rejections under 35 U.S.C. 112, paragraphs 1 and 2 to be made.
• For a transition period, the Office will provide management review of requirements for information for interrogatories and stipulations.

Supplemental Replies37 CFR 1.111(a)(2)

• Supplemental replies are no longer entered as a matter of right.
• After a complete reply has been filed, the Office may enter a supplemental reply that is filed before final rejection or allowance and in sufficient time to be entered into the application file, if the subsequent reply is clearly limited upon cursory review to:
  • Cancellation of claims;
  • Adoption of an examiner suggestion(s);
  • Placement of the application in condition for allowance;
  • Reply to an Office requirement made after the first reply was filed;
  • Correction of informalities (e.g., typographical errors); or
  • Simplification of issues for appeal.
• Supplemental replies filed during a suspension of action under § 1.103(a) or (c) will continue to be entered as a matter of right.
• If the applicant wishes to have a (not-entered) supplemental reply considered by the examiner, applicant must include the contents of the supplemental reply in a subsequent proper reply.
• IDSs are not considered replies and are not subject to the new limitations:
  • except where a second IDS is submitted in reply to a § 1.105 requirement for information.

Preliminary Amendments37 CFR 1.115

• Effective Date: Applies to applications filed on or after September 21, 2004.
• Preliminary amendments that are present on the filing date of an application are treated as part of the original disclosure:
  • Applicants are responsible for reviewing all preliminary amendments present on the filing date and providing a reference thereto in a § 1.63 oath or declaration for each such preliminary amendment containing subject matter not otherwise present in the application as filed.
• Preliminary amendments seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.

Reissue Applications 37 CFR 1.175 and 1.178

• If a reissue continuation of a reissue application is filed and the parent reissue is not being abandoned, then the continuation must identify an error not corrected in the parent reissue application. § 1.175.
• The requirement for physical surrender of the original patent has been eliminated. § 1.178.
  • Surrender is automatic upon grant of the reissue patent.
  • Effective date: September 21, 2004, the date of publication of the final rule.
  • Applies retroactively to all pending reissue applications.

Eighteen Month Publication of Application37 CFR 1.215

• Patent application publications may be based on amendments to (§ 1.215(a)):
  • Abstract;
  • Claims that are reflected in a complete claim listing;
  • Drawings; and
  • Specification (other than abstract or claims) if amended via a substitute specification.
• The amendment must be submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication have begun:
  • Generally four months prior to the projected date of publication.

Protests, Second or Subsequent 37 CFR 1.291

• A statement must accompany a protest that it is the first protest submitted in the application by the real party in interest (who does not need to be identified), or there must be compliance with the requirements for second or subsequent protests (§ 1.291(b)(2)):
• This section does not apply where a protest is the first protest in the application.
• To eliminate cumulative prior art submissions by a single protester, second or subsequent protests must explain: (a) why additional prior art issues are significantly different; and (b) why they were not earlier presented. (§ 1.291(c)(5)).
• In addition, a processing fee under § 1.17(i) is required.

List of Contacts

• Generally : Robert Spar, Director (571) 272-7700; Hiram Bernstein (571) 272-7707
• Office of Patent Legal Administration (571) 272-7701
  • §§ 1.4, 1.52, 1.57 (b)-(g), 1.58(b) & (c) - Michael Lewis (571) 272-7755
  • §§ 1.6, 1.19, 1.58(a) & (c), 1.83, 1.84 - Karin Ferriter (571) 272-7744
  • §§ 1.17, 1.102, 1.291 - James Engel (571) 272-7725
  • §§ 1.27, 1.57(a), 1.91, 1.94 - Eugenia Jones (571) 272-7727
  • §§ 1.78, 1.98 - Jeanne Clark (571) 272-7714
  • § 1.76 - Kery Fries (571) 272-7757
  • § 1.105 - Anton Fetting (571) 272-7717
  • § 1.111 - Joni Chang (571) 272-7720
  • § 1.115 - Fred Silverberg (571) 272-7719
  • § 1.215 - Mark Polutta (571) 272-7709
  • §§ 1.175, 1.178 - Kenneth Schor (571) 272-7710

For More Information

Questions and answers regarding this final rule package will be posted on the Office’s official website, http://www.uspto.gov.

This slide set, signature examples and executive summary are also available on the Office’s web site at: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/spfrmoreinfo.html

Thank You

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