1309 Issue of Patent [R-08.2012]
Under the current publication process, electronic capture of most of the information to be printed in a patent will begin as soon as an allowed application is received in the Office of Patent Publication, immediately after the Notice of Allowance has been mailed. The Office of Patent Publication forwards the allowed applications to the printer for Initial Data Capture (IDC). This IDC process takes approximately five weeks to accomplish and during this time the application, if in a paper file, is not available to examiners or for purposes of making copies of the application (copies of the application files that have been published may be ordered from the Office of Public Records, upon payment of the fee, but the applications will not be removed from the publication process for purposes of making copies). After IDC is completed, the application is returned to the Office of Patent Publication, and the file will be available to examiners and the Office of Public Records.
When the issue fee is paid and all other requirements have been met (e.g., drawings) within the time allowed by law, the application is forwarded to the printer for Final Data Capture (FDC) and final issue preparation. At this point, the application can only be retrieved if it is withdrawn from issue. The application is assigned a patent number and issue date about ten days before the application issues as a patent, and an Issue Notification is mailed to inform the applicant of the patent number and issue date. A bond paper copy of the patent grant is ribboned, sealed, and mailed by the Office of Patent Publication.
All allowed applications ready for printing will be selected by chronological sequence based on the date the issue fee was paid. Special handling will be given to the following applications in these categories:
- (A) Allowed cases which were made special by the Director.
- (B) Allowed cases that have a U.S. effective filing date more than 5 years old.
- (C) Allowed reissue applications.
- (D) Allowed applications having an effective filing date earlier than that required for declaring an interference with a copending application claiming the same subject matter.
- (E) Allowed application of a party involved in a terminated interference.
To ensure that any application falling within the scope of the categories outlined above and identified by (A) to (E) receives special treatment, the examiner should notify, via e-mail, the Manager of the Publishing Division, Kim Terrell in the Office of Publication that a particular application (identify the application number) should be given special treatment. The examiner should state the special treatment category outlined above.
35 U.S.C. 2 Powers and duties.
- (b) SPECIFIC POWERS.— The
- (1) shall adopt and use a seal of the Office, which shall be judicially noticed and with which letters patent, certificates of trademark registrations, and papers issued by the Office shall be authenticated;
35 U.S.C. 153 How issued.
Patents shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon and shall be recorded in the Patent and Trademark Office.
I. PRINTING NAMES OF PRACTITIONERS AND FIRM ON PATENTS
The Fee(s) Transmittal form (PTOL-85B) provides a space (item 2) for the person submitting the base issue fee to indicate, for printing, (1) the names of up to three registered patent attorneys or agents or, alternatively, (2) the name of a single firm, which has as a member at least one registered patent attorney or agent, and the names of up to two registered patent attorneys or agents. If the person submitting the issue fee desires that no name of practitioner or firm be printed on the patent, the space on the Fee(s) Transmittal form should be left blank. If no name is listed on the form, no name will be printed on the patent.
II. ASSIGNMENT PRINTED ON PATENT
The Fee(s) Transmittal form (PTOL -85B) provides a space (item 3) for assignment data which should be completed in order to comply with 37 CFR 3.81. Unless an assignee’s name and address are identified in item 3 of the Fee(s) Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied. See MPEP § 307. Recording of the assignment, or submission of the assignment for recordation as set forth in 37 CFR 3.11 is required for a Patent to issue to an assignee. See 37 CFR 3.81(a).
III. ASSIGNEE NAMES
Only the first appearing name of an assignee will be printed on the patent where multiple names for the same party are identified on the Fee(s) Transmittal form, PTOL-85B. Such multiple names may occur when both a legal name and an “also known as” or “doing business as” name is also included. This printing practice will not, however, affect the practice of recording assignments with the Office in the Assignment Division. The assignee entry on form PTOL-85B should still be completed to indicate the assignment data as recorded in the Office. For example, the assignment filed in the Office and therefore the PTOL-85B assignee entry might read “Smith Company doing business as (d.b.a.) Jones Company.” The assignee entry on the printed patent will read “Smith Company.”
1309.02 “Query/Printer Waiting” Cases [R-08.2012]
When the printer finds an apparent error in an application, the file is returned to the Office with an attached “Query/Printer Waiting” slip noting the supposed error.
The Publishing Division forwards such “query/printer waiting” applications to the Technology Center (TC) Director’s secretary. The secretary acts as a control center in each TC and forwards the applications to the examiner by the appropriate route. The application should be taken up and acted on immediately and returned to the TC Director’s secretary within 72 hours (excluding weekends and holidays). Either necessary corrective action should be taken or an indication should be made that the application is considered to be correct as it stands. A copy of the query form is entered into the application file, and the response from the examiner should be clear from the record.
If the examiner concurs in the criticisms, the errors should, if possible, be corrected in clean red ink and initialed or be corrected by examiner’s amendment (note that in an Image File Wrapper (IFW) application, an examiner’s amendment must be made by way of a formal examiner’s amendment). See MPEP § 1302.04.
Delays in making corrections may sometimes be avoided if the applicant or his or her representative is telephoned immediately, and the error is corrected by amendment under 37 CFR 1.312, where appropriate.
Applications with a paper file wrapper are picked up from the TC Director’s office by the messenger and returned to the Publishing Division for forwarding to the printer.
THESE APPLICATIONS SHOULD NOT BE MAILED TO THE PUBLISHING DIVISION.
A similar process exists for IFW applications, with the query form being placed into the IFW, and the response from the examiner also made part of the record. For IFW processing, see IFW Manual.