Patent Business Goals: Final Rule Q&A

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.

(1) Nothing is necessary to establish small entity status. The change to 37 CFR 1.27 applies to the application as of September 8, 2000, that is, the applicant is considered to have established small entity status in the application on September 8, 2000.

(2) The (small entity) surcharge under 37 CFR 1.16 is required. The appropriate basic filing fee was not present on filing (since the application was filed before September 8, 2000, and small entity status was not established until September 8, 2000), and 37 CFR 1.53(f) (or (g)) requires payment of the surcharge under 37 CFR 1.16(e) (or (l)) if the appropriate basic filing fee is not present on filing.

(3) No. Regardless of whether the Office has issued a Notice to File Missing Parts of Application as of September 8, 2000, the appropriate basic filing fee was not present on filing and 37 CFR 1.53(f) (or (g)) requires payment of the surcharge under 37 CFR 1.16(e) (or (l)) if the appropriate basic filing fee is not present on filing.

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.

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.

Yes. Even though the original patent claims have been broadened, they are still considered as being drawn to the same invention as was claimed in the original patent. Short of a disclaimer of the original claims being filed in the reissue application, claims to the invention claimed in the original patent (even if broadened) will always be considered the elected invention in a first reissue application which additionally contains claims to another invention. If the constructively elected broadened claims correct a legitimate error in the original patent, the first reissue application may be able to issue prior to the completed examination of any later filed divisional applications. If no error is corrected by the constructively elected claims, and the claims are found to be allowable, prosecution of the first reissue application may have to be suspended pending the completion of the examination of any later filed divisional application, at which time the claims will be recombined into a single application for issuance.

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.

Eugenia Jones (Legal Advisor, Office of Patent Legal Administration, (703) 306-5586)

To appoint a power of attorney or authorize an agent to act for you, you can use form PTO/SB/81 "Power of Attorney or Authorization of Agent" (also on the USPTO's printable forms website). The power of the attorney portion was removed from the declaration forms because while all the inventors must sign a declaration form, it is not always required that all the inventors sign a power of attorney. For example, it is acceptable to have the assignee(s) appoint the power of attorney. See 37 CFR 3.71. The combined declaration and power of attorney forms will still be accepted by the Office.

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.

If a preliminary amendment (with a date of certificate of mailing on or after 3/1/01) is non-compliant, the applicant will be given one month from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to resubmit the amendment in compliance with § 1.121. This period of time is not extendable. The examination on the merits of the application may commence without the entry of the preliminary amendment unless the applicant resubmits the amendment in compliance with § 1.121 within the one-month time period.

If an amendment (with a date of certificate of mailing on or after 3/1/01) filed in response to a non-final Office action is a bona fide reply, but is non-compliant with 37 CFR 1.121, the applicant will be given one-month (or 30 days, if longer) from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to correct the non-compliance in order to avoid abandonment. This period of time is extendable under 37 CFR 1.136(a).

If an amendment after final (with a date of certificate of mailing on or after 3/1/01) is non-compliant, the unentered amendment will be forwarded to the examiner. The examiner will address the non-compliance in an Advisory Action. Additional time will not be given to make the amendment compliant with the rule. Applicant will have the remainder of the time period (if any) set forth in the final Office action to correct the non-compliance.

If an amendment under 37 CFR 1.312 (with a date of certificate of mailing on or after 3/1/01) filed before the payment of issue fee is non-compliant, the 312 amendment will be addressed by the examiner in a Response to 312 Amendment (PTO-271). Additional time will not be given to correct the non-compliance. Applicant will have the remainder of the time period (if any) set forth in the Notice of Allowance to correct the non-compliance before, or filed with, the payment of issue fee.

You must timely respond to the Notice to File Missing Parts to avoid abandonment of the application. Your response may request reevaluation of your prior attempt to claim small entity status since the Office will not on its own reevaluate your prior attempt to claim small entity status. Additionally, the response should include a new written assertion of entitlement to small entity status (e.g., Your attempt to claim small entity status while being ineffective under the former rule, is effective under the amended rule since an unsigned small entity statement accompanied application papers that were signed.).

A small entity surcharge should also be submitted since the surcharge is owed even if the Office accords small entity status, pursuant to the rule change, based on the previous ineffective attempt to claim small entity status.

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.

After the effective date of the rule change, the latest amended version of a claim must be presented in clean form, including all changes made by the current, as well as any earlier, amendment. A marked-up version showing changes made by only the current amendment must accompany the clean version.

Applicants will also be able to submit a clean set of all pending claims, consolidating all previous versions of pending claims from a series of separate amendments into a single clean version in a single amendment paper. This submission of a clean version of all of the pending claims will be construed as directing the cancellation of all previous versions of any pending claims. No marked-up version will be required to accompany the clean version where no changes other than the consolidation are being made.

In either Word 97 or Word 2000, open the document to be amended. Go to Tools and select Track Changes then Highlight Changes from the pull-down menu. Place a check mark before all three selections in the Highlight Changes dialog box (1. Track Changes while editing; 2. Highlight changes on screen; 3. Highlight changes in printed document). Under "Options" in the same box, select "underline" for inserted text, and "strikethrough" for deleted text. Click on "OK." Click on "OK" again to return to the document. Proceed to amend the document. The document can now be printed showing the underlining and strikethrough. This is the "marked-up version."
To print the "clean version," go back to the Highlight Changes box under Tools and remove the check mark before "Highlight changes in printed document." Click "OK" and print the document. This is the "clean version" of the amended document, and does not include any markings showing deleted or added subject matter.

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.

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.

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.

If an amendment after final (with a date of certificate of mailing on or after 3/1/01) is a bona fide reply meeting the reply requirement under 37 CFR 1.111, but is non-compliant with § 1.121, the amendment after final could be considered as a proper submission for a RCE under 37 CFR 1.114. The Office will process the RCE as a proper RCE and withdraw the finality of the last Office action. Applicant will be given one-month (or 30 days, if longer) from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to correct the non-compliance in order to avoid abandonment. This period of time is extendable under 37 CFR 1.136(a).

No. A fee has not been imposed for submission of information by a third party.

Section headings may be added to the specification by merely identifying the precise location for entry followed by the clean version of the exact heading to be entered. The Legal Instruments Examiner (LIE) will enter the heading as a block insert. Applicants are not required to add headings by total paragraph or section replacement, nor is a marked-up version needed.

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.

The amendment may be considered not fully responsive and treated by the examiner under 37 CFR 1.135(c). The examiner, however, will not give applicant additional time for correcting amendments submitted after final rejection. See MPEP Sec. 714.03.

Mandatory compliance with the revised rule is not required until March 1, 2001. It is suggested, however, that applicants adopt the revised procedures on or after November 7, 2000, in order to adjust to the changes in amendment practice. The time period prior to November 7 will be used by the Office to train technical support personnel on the changes of the new rule.

On or after March 1, 2001, all amendments must comply with revised § 1.121.

Yes. At the very least, recent releases of Word (Office 97 or later) and WordPerfect (9.0) have features for automatically numbering paragraphs.

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.

Applicant should file a paper under 37 CFR 1.28(c) requesting that small entity status be withdrawn and pay the remaining amount owed for the filing fee as a large entity. A surcharge is not required.

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.

All applications with drawings need to be reviewed in OIPE to determine whether the drawings are capable of reproduction (can be copied and/or scanned in black and white) and are in the English language. Further compliance with 37 CFR 1.84 will not be required by OIPE. Reproducable drawings are required even if an application is not going to be published, so that the Office will be able to provide a certified copy of the application for foreign priority and other purposes. Furthermore, since applicants may rescind a non-publication request, all applications need to be reviewed according to the same standards regardless of whether they are to be published. In addition, an English translation of the application is required pursuant to 37 CFR 1.52(d)(1). Aside from the non-English text and for the need to have a black and white copy of color drawings/photographs in plant applications (see 37 CFR 1.165(b)), this drawing review during scanning is the same review that has been performed for several years. The Office does not anticipate requiring very many more drawing corrections in OIPE as a result of pre-grant publication.

As a result of this minimal screening, the Office will not be requiring applicant to submit ‚"formal drawings‚" during preexamination under 37 CFR 1.215(a), the Office will merely require drawings that can be copied and are in the English language. Drawings that are filed in reply to a preexamination notice requiring drawings that can be copied in black and white or are in the English language will be rescanned and included in the patent application publication. If applicant desires to have better drawings included in the pre-grant publication, the drawings will have to be submitted in paper on filing or in electronic form through the Electronic Filing System (EFS) within one month of the filing date of the application, or fourteen months from any priority date claimed 35 U.S.C. §§ 119, 120, 121 or 365(c). See 37 CFR 1.215(c).

Applicants should also note that the Office may require ‚"formal drawings‚" at allowance merely because applicant originally indicated the drawings as informal. In addition, the patent examiner may find errors in the drawings and require correction of the drawings. If the application was filed after May 29, 2000, any formal or corrected drawings filed after allowance will result in a reduction to any patent term adjustment. See 37 CFR 1.704(c)(10).

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 .

Small entity status is automatically established as of September 8, 2000. To obtain a refund, applicant must file a refund request in accordance with 37 CFR 1.28(a). 37 CFR 1.28(a) was amended (effective November 7, 2000) to provide for refund requests within three months of the date of payment of the full fee (instead of the former two-month period). The date of payment of the fee is the date of receipt in the Office as defined by 37 CFR 1.6. The date of receipt of an authorization to charge fees starts the period for refunds under 37 CFR 1.28(a). Therefore, applicant must explicitly timely request a refund within three months of the submission of the authorization to charge fees if the request for refund is filed on or after November 7, 2000. Any request for refund under 37 CFR 1.28(a) filed before November 7, 2000, must be filed within two months of the date of payment of the full fee in accordance with the version of 37 CFR 1.28(a) in effect at that time.

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.

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.

Yes. Applicants may continue to use the former small entity forms or similar forms to assert entitlement to small entity status. As the rule change to 37 CFR 1.27 has not changed the requirement for an investigation for entitlement to small entity status, some practitioners have stated that they feel more comfortable using the old form to ensure that a proper investigation is made.

No. If an amendment is filed with a certificate of mailing dated before 3/1/01, the Office will not treat the amendment as non-compliant. Furthermore, if the amendment is an unentered amendment after final and the Office subsequently withdraws the finality of the last Office action after 3/1/01, the Office will not treat the amendment as non-compliant because the certificate of mailing is dated before 3/1/01.

For example, if the applicant subsequently resubmits an amendment after final with a certificate of mailing dated before 3/1/01 as a preliminary amendment in a CPA filed after 3/1/01, the Office will not treat the amendment as non-compliant. Similarly, the Office will not treat the amendment after final as non-compliant if the applicant subsequently submits it as a submission in a RCE under 37 CFR 1.114.

37 CFR 1.27(a)(2)(i) and (ii) are additive requirements and a party seeking to qualify as a small business must meet both requirements as to transfer of rights and SBA requirements.