Patent Business Goals: Final Rule Q&A
Patent Help - Patent Business Goals - Other
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 or Patent Center.
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.
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.
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
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.
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)
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.
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.
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 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.
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.
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.
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.
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.
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.
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 .
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.
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.