Patents to Issue More Quickly
                            After Issue Fee Payment

   As part of the Patent and Trademark Office's changes in business
practices to streamline its processing of patent applications, and
thereby maximize patent term of patents, the PTO has established an
objective to issue patents within four weeks of payment of the issue fee
by July of 1999 instead of the current average of three months. To
achieve this objective, the PTO has changed its processes for publishing
patents. In the past, the process of electronically capturing the
information to be printed in a patent was not begun until the issue fee
was paid and formal drawings were filed. With the old process,
correspondence submitted after allowance but before payment of the issue
fee did not delay the patent issue process. Under the new process,
however, electronic capture of most of the information to be printed in
a patent shall begin as soon as an allowed application is received in
Office of Patent Publication, which is well before the issue fee is
paid. Furthermore, under the new process, assignee and attorney
information are taken from the issue fee transmittal form, PTOL-85B,
when the issue fee is paid, and after most of the patent document has
been compiled.

   Any amendments, information disclosure statements, and corrected or
formal drawings that are filed after allowance of the application
complicate preparation of the patent document and will, most likely,
delay issuance of the patent. Accordingly, applicants are encouraged to
make an effort to file drawings suitable for printing (i.e. formal
drawings) with the application on filing and to file papers such as
amendments, information disclosure statements, and corrected or formal
drawings, as soon as possible during examination. If the papers are not
filed until after allowance, applicants are encouraged to file the
papers within one month after a Notice of Allowance has been received in
order to minimize disruption to the printing process.

   Today, many papers are filed in allowed applications that unnecessarily
delay the issuance of the applications as patents. For example, if a
request for a corrected filing receipt is filed after allowance, the
application must be taken out of the printing cycle to process the
request and issue the corrected filing receipt even though a corrected
filing receipt is NOT needed to ensure that the patent is printed
without the errors of the filing receipt. A corrected filing receipt is
not necessary for correct printing because the inventors' names, the
title of the invention and any priority information are separately
captured by the data capture contractor from documents within the
application file wrapper and not from PALM data (which is used to
generate the filing receipt). The inventors and the spelling of their
names are taken from the originally filed executed oath or declaration
or any later filed papers correcting the information thereon. The title
of the invention is taken from the application papers and any
amendments. Foreign priority information is also taken from the oath or
declaration.

   The processing of requests for corrected filing receipts delays the
issue process and because such corrected filing receipts are not needed
in order to have the correct information printed on the patent. In view
of this and the fact that filing receipts are now generated earlier in
the application process (see Changes In Practice In Supplying Certified
Copies And Filing Receipts, 1199 O.G. 38 (June 10, 1997)), the PTO is
changing its practice with respect to requests for corrected filing
receipts. The new practice is that corrected filing receipts will not be
mailed after the date of mailing of a Notice of Allowance and Issue Fee
Due unless special circumstances exist which compel such action.

   The duplicate submission of amendments may also delay the issue process.
If an amendment is faxed to an examiner to put the application in
condition for allowance, that faxed amendment is entered in the file as
an official paper. The application is subsequently allowed and forwarded
to publication. If a duplicate amendment is mailed to the PTO, it must
be matched with the file, and this results in the application being
extracted from the issue process. The Office must then determine whether
the paper is in fact a duplicate. This may delay the issuance of the
patent, especially when the duplicate amendment is submitted with or
after payment of the issue fee. Even when an application is not in the
issue process, the same correspondence should not be mailed and faxed to
the Office, since the Office practice, in general, is to discard the
duplicate copy once it is determined that the paper is a duplicate.
Duplicate filing of papers only cause delays and confusion, unless the
duplicate has been specifically required by the Office. See Manual of
Patent Examining Procedure, Section 719.01(a).

   If there are any questions or comments about this change in practice,
they should be forwarded to Charles Hall, Program Analyst, Systems and
Contracts Division, Office of Patent Publication, by facsimile at (703)
305-4372, by telephone at (703) 305-8354, or by e-mail at
charles.hall@uspto.gov.

February 10, 1999                                        NICHOLAS P. GODICI
                                              Acting Assistant Commissioner
                                                                for Patents