1 United States Patent and Trademark Office PATENT PRACTICE TIPS USPTO Signatures and Power of...
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1 United States Patent and Trademark Office PATENT PRACTICE TIPS USPTO Signatures and Signatures and Power of Attorney Power of Attorney Terry J. Dey Terry J. Dey Technical Writer-Editor Technical Writer-Editor Office of Patent Legal Administration Office of Patent Legal Administration
1 United States Patent and Trademark Office PATENT PRACTICE TIPS USPTO Signatures and Power of Attorney Terry J. Dey Technical Writer-Editor Office of
LSACPATENT PRACTICE TIPS USPTO
United States Patent and Trademark Office
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37 CFR § 1.4(d)
S-signatures are provided for in § 1.4(d)(2):
An S-Signature is a permitted type of
signature between forward slash marks
that is not handwritten (§ 1.4(d)(1)).
Note: Samples of acceptable signatures are posted on the Office’s
web site:
www.uspto.gov/web/offices/pac/dapp/opla/preognotice/sigexamples_alt_text.pdf
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S-Signatures – 5 Requirements
37 CFR § 1.4(d)(2)
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.
The person signing must insert his or her own signature between the
forward slash marks, § 1.4(d)(2)(i).
Only the signer can insert his or her own signature:
a secretary, paralegal, etc., is not permitted to sign/ insert
another person’s signature, e.g., a practitioner’s or inventor’s
signature, and
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Indicate examples provided in handout.
Examiners are to presume that an S-signature was properly inserted
by the signer. Compliance should be presumed unless there is a
specific indication otherwise.
United States Patent and Trademark Office
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37 CFR § 1.4(d)(2)
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.
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).
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
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Regarding item 5; highlight that a registered practitioner includes
those acting in a representative capacity
United States Patent and Trademark Office
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Examples Where S-Signatures Can Be Used
S-Signatures may be used for correspondence being filed in the
Office for patent applications, patents and reexamination
proceedings.
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;
File the document via EFS-Web; 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, in addition to filing
via EFS-Web.
S-Signatures may not be used for papers submitted to the Office of
Enrollment & Discipline § 1.4(e).
United States Patent and Trademark Office
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S-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 for both;
The typed or printed name below the signature must be reasonably
specific enough so that the identity of the signer can be readily
recognized (§ 1.4(d)(2)(iii)(B)).
Titles may be included as part of the signature.
Changes in S-signature (different papers or different applications)
are not recommended. § 1.4(h)
Example: An s-signature that includes the attorney docket number
for that application would not be a consistent signature.
United States Patent and Trademark Office
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Questionable Signatures
Ratification, confirmation or evidence of authenticity of a
signature may be required where the Office has:
Reasonable doubt as 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.
United States Patent and Trademark Office
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Certification Requirement
For another’s signature: A person submitting a document signed by
another under § 1.4(d)(2):
is obligated to have a reasonable basis to believe that the person
whose signature is present on the document actually inserted that
signature, and
should retain evidence of authenticity of the signature.
For your own signature: The person inserting a signature under §
1.4(d)(2) in a document submitted to the Office certifies that the
inserted signature appearing in the document is his or her own
signature.
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Must be in writing,
Name one or more representatives in compliance with §
1.32(c),
Give the representative power to act on behalf of the principal,
and
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one or more joint inventors;
up to ten registered patent attorneys or
registered patent agents; or
those registered patent practitioners
Power of Attorney
37 CFR §1.32(b)
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patent practitioners
Power of attorney must be accompanied by a separate paper
indicating which ten patent practitioners named in the power of
attorney are to be recognized by the Office as being of record in
application or patent to which the power of attorney is
directed.
If no separate paper, no power of attorney will be entered.
The separate paper can be signed by one of the attorneys or agents
of record, by a patent attorney or agent acting in a representative
capacity, the assignee, acting pursuant to 37 CFR § 3.73(b), or by
all of the applicants.
The separate paper cannot request that a Customer Number be used
instead, only the applicant or assignee can give power of attorney
to a Customer Number.
Power of Attorney;
37 CFR 1.32(c)
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Acting in a Representative Capacity § 1.34
A registered patent attorney or patent agent not of record but
acting in a representative capacity must specify his/her:
Registration number
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A person acting in a representative capacity may not sign:
A power of attorney,
- an executed declaration has been filed or
- the practitioner was named in the papers
accompanying the application papers,
A change in correspondence address except where an executed
oath/declaration has not been filed and the practitioner filed the
application,
A terminal disclaimer, or
A request for an express abandonment without filing a continuing
application
Acting in a Representative Capacity § 1.34
United States Patent and Trademark Office
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Do not use a combined declaration/power of attorney (POA)
form:
Use a separate declaration form and a separate power of attorney
form.
Use of a combined form could be a problem if:
A continuation is filed, and it includes a copy of the original
declaration/POA but the POA was changed in the parent application
(MPEP 201.06(c)II, VII);
The assignee is the real client, not the inventor.
The POA should be from whomever is controlling the attorney (the
real client).
Who is paying the fees, including the attorney fees?
Who is consulted when decisions have to be made?
Recommendation: Separate the POA from the Declaration/Oath
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Note the following rules, and canons
from Part 10 of 37 CFR:
§ 10.56: Canon 4: A practitioner should preserve the confidences
and secrets of a client.
§ 10.57: --------- “Confidence” and “Secret” defined, and
guidelines given for related actions.
§ 10.61: Canon 5: A practitioner should exercise independent
professional judgment on behalf of a client.
§ 10.68: --------- Avoiding influence by others than the
client.
§ 10.76: Canon 6: A practitioner should represent a client
competently.
§ 10.83: Canon 7: A practitioner should represent a client
zealously within the bounds of the law.
Recommendation: Separate the POA from the Declaration/Oath
(cont.)
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An assignee of the entire interest must establish its right to take
action as provided in 37 CFR § 3.73(b).
Forms PTO/SB/81 (POA or Revocation of POA) contain check boxes to
identify the person signing.
For the assignee, the forms read “Statement under 37 CFR 3.73(b)
(Form PTO/SB/96) submitted herewith or filed on___.”
Form PTO/SB/80 (“Power of Attorney to Prosecute Applications Before
the USPTO”) is a general POA and does not include application
information.
File the PTO/SB/96 or equivalent together with this form to
identify the specific application.
The title of the person signing should be identified on the
POA.
Where the signer does not have apparent authority (e.g., an officer
of the assignee), a statement that the signer is empowered to act
must be contained in the submission.
POAs Signed by the Assignee
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The information required by the rule does not have to
be set forth in a separate document (i.e., PTO/SB/96), but use of
the Office’s form is recommended.
When using the PTO/SB/81, the best practice is to have both the POA
and the §3.73(b) statement signed by the same person since the POA
forms do not contain a “title” box or the “empowered to act”
language needed when the person signing does not have apparent
authority.
If §3.73(b) statement already of record for the assignee taking
action, no need for a second one with POA.
POAs Signed by the Assignee (cont.)
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What is the recommended approach for an assignee to give a POA in a
large number of applications?
Execute a single PTO/SB/80 form.
It is general POA, and it will be effective for any/all of
assignee’s applications in which it is filed.
Use PTO/SB/96 form (Statement under 37 CFR § 3.73(b)) to establish
assignee ownership and the right of the assignee to take action in
a specific application.
Indicate the reel and frame where the chain of title documents have
been recorded in the Office; or
Append a copy of title document(s) and check the box to state that
documentary evidence has been, or is currently being, submitted
(separately) for recordation to the Assignment Division.
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What is the recommended approach for an assignee to give a POA in a
large number of applications? (cont.)
Give specific authority to an appointed practitioner to act on
behalf of the assignee.
Practitioner must be given authority to bind the assignee entity.
This can be accomplished in a separate document signed by the
assignee (client) that is retained in the practitioner’s files.
Then, a PTO/SB/96 can be completed and signed by the practitioner
for each specific application, rather than having the assignee sign
a PTO/SB/96 for each application.
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File a copy of the executed PTO/SB/80 (a general POA) together with
the executed PTO/SB/96 (to identify a specific application) using a
cover letter identifying both.
NOTE: Copies of the chain of title document(s) must be separately
submitted for recordation in the Assignment Division per 37 CFR §
3.11 before, or concurrently, with
the filing of the PTO/SB/96.
Filing before is preferred, if possible, to avoid inadvertent
forwarding of the copy to the Assignment Division for
recordation.
Alternatively, if it is not burdensome for the assignee to execute
a POA for each application, execute and file PTO/SB/81 (a specific
POA) together with the executed PTO/SB/96, using a cover letter
identifying both.
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If filing assignment document concurrently for recording, a second
copy of the assignment document is required to be filed with
application to comply with 37 CFR 1.73(b). Filing a copy of
the assignment with Assignments Branch is for recording the
assignment and it is not entered as a document into the
application.
United States Patent and Trademark Office
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Use a CN to identify practitioners who are to be given power of
attorney.
Customer Number practice allows the list of practitioners to be
easily changed.
Power of Attorney cannot be given to both a CN and a list of
practitioners.
Establish a new CN if a unique set of practitioners is to be given
POA.
To change to a different CN, however, a separate POA must be filed
in each application.
Recommendation: Use a Customer Number When Possible
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Ensure that the same CN is used for the Correspondence Address, so
that the practitioners all have access to Private PAIR for the
applications for which they hold POA.
Very easy to change the correspondence address in multiple
applications:
Just change the address data associated with the CN, and it will
apply to all applications.
The change can be made by any attorney of record (with a
POA).
Recommendation: Use a Customer Number When Possible (cont.)
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Power of Attorney by the Inventor
(Examples A1-A4)
(Examples B1-B3)
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Mary Jones
Example A1
Inventors Bob Smith, Mary Jones and Tom Williams are named
inventors in the application.
Three PTO/SB/81 forms are filed.
The forms that are signed by Bob Smith and Mary Jones appoint the
practitioners associated with Customer No. 12345, and direct
correspondence to the address associated with Customer No.
12345.
The form signed by Tom Williams appoints the practitioners
associated with Customer No. 98765 and directs correspondence to
the address associated with Customer No. 98765.
Bob Smith
Tom Williams
Customer No.
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Example A1 (cont.)
* This power of attorney is not proper and should not be accepted.
POA by less than all of the inventors requires a petition. See MPEP
402.10.
Form PTO/SB/81
Form PTO/SB/81
The POA signed by inventor Tom Williams appoints practitioners
associated with Customer No. 98765.
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Applicants or owners cannot appoint different powers of attorney. A
POA by less than all applicants/owners must be filed with a
petition and fee set forth in 37 CFR 1.17(f). See MPEP
402.10.
United States Patent and Trademark Office
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Inventors A and B are named inventors in the application.
Two PTO/SB/81 forms are filed, one signed by A and one signed by B.
Both forms appoint the practitioners associated with Customer No.
76543, but direct correspondence to the address associated with
Customer No. 54321.
*The power of attorney is proper and should be accepted.
Form PTO/SB/81
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Example A3
Inventor A is the sole inventor in the application. Two years ago,
the inventor executed an original oath or declaration and appointed
attorney X by power of attorney. The inventor died several months
ago, therefore the power of attorney to attorney X has
terminated.
*The power of attorney is proper and should be accepted.
The legal representative of Inventor A has decided to intervene and
continue prosecution of the application with new attorney Y.
The legal rep. may execute a declaration form PTO/SB/02LR along
with form PTO/SB/81 appointing new attorney Y.
Form PTO/SB/81
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The legal representative is not required to execute a declaration
if one signed by the inventor is already of record, but it is
recommended (1) so that the name of the legal representative will
appear on any patent issuing from the application and (2) the
record will clearly identify the person taking action. Ideally
applicant should file a supplemental ADS and a request for a
corrected filing receipt to ensure that the record is appropriately
updated.
United States Patent and Trademark Office
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Example A4
Inventors A and B are named inventors in the application. Both
inventors execute a declaration, but do not appoint an attorney.
Inventor A dies.
Inventor B files proof that Inventor A is dead, in accordance with
MPEP 409.01(f).
No legal representative of deceased Inventor A has intervened in
the application.
Form PTO/SB/81 is filed in the application and is signed by
Inventor B.
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Note: the MPEP requires proof of the death. The paper that
accompanies such proof does not have to look exactly like the
example provided on this slide. The point here is that once a joint
inventor has provided proof of the death of one or more of the
other inventors, the living inventors can appoint attorneys, and
the Powers can be accepted although all of the inventors have not
signed. However, once a legal representative has filed an oath or
declaration on behalf of the deceased inventor, any POAs would need
to be filed by the living inventor(s) and the legal
representative.
United States Patent and Trademark Office
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Example B1
XYZ Corporation is the assignee of the entire interest of an
application that names A and B as inventors. Bob Smith, President
of XYZ Corporation, signs a general power of attorney (PTO/SB/80)
appointing the practitioners associated with Customer No. 12345 and
directing correspondence to the address associated with Customer
No. 12345.
The PTO/SB/80 is filed with a properly-completed PTO/SB/96 (3.73(b)
form) signed by Ted Mason (Registration No. 24555), one of the
practitioners associated with Customer No. 12345.
On the PTO/SB/96, Boxes “1” and “A” are checked, and the Reel and
Frame are identified.
Form PTO/SB/96
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Example B1 (cont.)
The box next to the words “As required by 37 CFR 3.73(b)(1)(i), the
documentary evidence…” is
not checked only
if all reels and frames are provided.
The USPTO official views the information recorded at the Reel and
Frame, and both inventors are listed as assignors to XYZ
Corporation.
*The power of attorney is proper and should be accepted.
Form PTO/SB/96
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Example B2
XYZ Corporation is the assignee of the entire interest of an
application that names A and B as inventors. Bob Smith, President
of XYZ Corporation, signs a general power of attorney (PTO/SB/80)
appointing the practitioners associated with Customer No. 12345 and
directing correspondence to the address associated with Customer
No. 12345.
The PTO/SB/80 is filed with the PTO/SB/96 (3.73(b) form) signed by
Ted Mason, one of the practitioners associated with Customer No.
12345.
Form PTO/SB/96
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a copy of the assignment document was included, but
the box next to the words “As required by 37 CFR
3.73(b)(1)(i),
the documentary evidence…” is not checked.
A copy of the assignment document was not recorded in the
Assignment Division.
*The power of attorney is not proper and should not be accepted.
Applicant must record the assignment documents and assert that the
assignment documents were, or concurrently are being, submitted for
recordation.
Box not checked
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Example B3
XYZ Corporation is the assignee of the entire interest of an
application that names A and B as inventors.
Bob Smith, President of XYZ Corporation, signs a specific power of
attorney PTO/SB/81 appointing the practitioners associated with
Customer No. 12345 and directing correspondence to the address
associated with Customer No. 12345.
A PTO/SB/96 (3.73(b) form) is filed with the PTO/SB/80 and is
signed by Bob Smith, President of XYZ Corporation.
United States Patent and Trademark Office
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no Reel and Frame is identified, and
no copy of the assignment documents is filed with the forms.
*The power of attorney is not proper and should not be accepted.
The form must be properly filled out and comply with 37 CFR
3.73(b).
Form PTO/SB/96
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Request to Withdraw from Representation in a Patent
Application
Office no longer requires at least 30 days between approval of the
withdrawal and the later of the expiration date of a time period
which can be obtained by a petition and fee for extension of time
for reply for a practitioner to withdraw.
Office will not grant a request to withdraw in a patent.
Office will not approve request to withdraw from practitioners who
acted in a representative capacity (§ 1.34).
United States Patent and Trademark Office
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Request to Withdraw from Representation in a Patent
Application
Office now requires the practitioner(s) to certify that he, she or
they have:
Given reasonable notice to the client, prior to the expiration of
the response period, that practitioner(s) intend to withdraw from
employment;
Delivered to the client or a duly authorized representative of the
client all papers and property (including funds) to which the
client is entitled; and
Notified the client of any responses that may be due and the time
frame within which the client must respond.
United States Patent and Trademark Office
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Request to Withdraw from Representation in a Patent
Application
The Office will no longer accept address changes to a new
practitioner, absent a new power of attorney when processing a
request to withdraw.
Correspondence address will be changed to assignee of the entire
interest who has properly become of record pursuant to 37 CFR 3.71
or the first named inventor.
Note: PTO/SB/83
PATENT PRACTICE TIPS USPTO
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Patents’ Initiatives and Projects
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Avoid submitting an application in the European problem/solution
format.
Format the application according to US rules and procedures. See
MPEP § 608
Avoid including multiple dependent claims that depend from other
multiple dependent claims
Craft claims according to US practice, see MPEP § 608.01(n)
Avoid including “Use” claims
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US practice requires that the applications contain the format which
is fully explained in MPEP 608.
608.01(a) Arrangement of Application
(a) The elements of the application, if applicable, should
appear in the following order:
(1) Utility application transmittal form, (2) Fee transmittal form,
(3) Application data sheet (see § 1.76).
(4) Specification, (5) Drawings, (6) Executed oath or
declaration.
(b) The specification should include the following sections
in order:
(1) Title of the invention, (2) Cross-reference to related
applications (unless
included in the application data sheet) ,(3) Statement regarding
federally sponsored research
or development, (4) The names of the parties to a joint research
agreement, (5) Reference to a “Sequence Listing,” a table, or
a
compact disc an incorporation-by-reference of the material on the
compact disc
(see § 1.52(e)(5)). The total number of compact discs
including
duplicates and the files on each compact disc shall be
specified.
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Do use USPTO forms without altering the language.
Do not use a combined declaration and power of attorney form.
USPTO forms can be found at:
http://www.uspto.gov/web/forms/index.html
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If a form is altered for use by a practitioner, the statement
appearing on the form regarding approval and the OMB number must be
removed.
Do file a separate declaration and power of attorney
United States Patent and Trademark Office
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Application Data Sheets
Do use an Application Data Sheet (ADS), although an ADS is not
required. Customers using an ADS can expect two advantages when
applying for a patent:
1. Improved accuracy of filing
receipts.
2. Accurately recorded application
data.
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Even though an ADS is not required, it is highly recommended. Not
only does it improve accuracy and timeliness, it has other
advantages such as
Amendments to a benefit claim, inventor/s name, etc. are simpler to
perform if an ADS is used.
Reduces the number of requests for corrected filing receipts
related to USPTO errors
Reduces application prosecution delays and improves the accuracy of
bibliographic data in patent application publications.
United States Patent and Trademark Office
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Application Data Sheets (Cont’d)
Use of a supplemental ADS is possible even though no original ADS
was submitted on filing.
The following information can be supplied on an ADS:
Application Information
Applicant Information
Correspondence Information
Representative Information
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Note: Providing Representative Information in an ADS does not
constitute a power of attorney in the application. See 37 CFR §
1.32.
United States Patent and Trademark Office
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Avoid submitting Preliminary Amendments on filing
A substitute specification will be required if a preliminary
amendment present on filing makes changes to the specification,
except for:
Changes to title, abstract, claims or addition of benefit claim
information to the specification
See the notice “Revised Procedure for Preliminary Amendments
Presented on Filing of a Patent Application,” 1300 Off. Gaz. Pat.
Office 69 (November 8, 2005), available at:
http://www.uspto.gov/web/offices/com/sol/og/2005/week45/patrevs.htm
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Make edits before filing applications which were originally filed
outside the U.S. as claim type and dependencies are
different.
A substitute specification is necessary for pre-grant publication
purposes.
If the preliminary amendment makes changes to the title, abstract,
claims, or adds benefit claim information to the specification, a
substitute specification will not be required.
United States Patent and Trademark Office
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Avoid submitting Preliminary Amendments on filing a Continuation or
Divisional
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Incorporate new claims, changes to the specification, etc., into
the application to be filed, as long as there is no new matter.
Addition of new matter would require the filing of a
continuation-in-part (CIP).
File only the claims that you intend to prosecute in the
application. Preliminary amendments are counted in the page tally
for determining if an application size fee is due.
A copy of the § 1.63 declaration from the prior application may be
filed even if the written description/claims differ from those of
the prior application since continuations or divisionals do not, by
definition, contain new matter.
Avoid a preliminary amendment in a continuation or divisional which
cancels all the claims and introduces a new set. Although
preliminary amendments to the claims do not automatically require a
new specification, if any changes are made as a result of the new
claims to the specification a new specification must be submitted.
It is suggested that if all new claims are submitted file the
entire specification and claims, rather than the preliminary
amendments. It avoids the possibility of canceling all the claims
and neglecting to submit new claims which may jeopardize the filing
date.
For CIP applications, a new declaration would be required.
United States Patent and Trademark Office
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1. Accelerated Examination
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Once a decision has been made on how to file the applications, I
want to give you a few tips to make the filing process a smooth
one.
The traditional route, via express mail or other postal services
will be covered under general best practices.
I do want to talk for a few minutes on filing via EFS-Web and
filing an application through the accelerated examination
process.
United States Patent and Trademark Office
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Accelerated Examination Common Failings
Failure to provide the text search logic. A mere listing of terms
will not suffice.
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The search should include US patents, US patent publications,
foreign patents and publications and non-patent literature.
Provide specific support including page, line, figure number.
United States Patent and Trademark Office
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Accelerated Examination Common Failings (Cont)
Failure to show support in the specification and/or drawings for
each limitation of each claim for every document whose benefit is
claimed.
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Provide specific support including page, line, figure for every
application whose benefit is claimed.
Provide a chart mapping claims and showing how each claim is
patentable over the reference
United States Patent and Trademark Office
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EFS-Web Filing
Avoid coding (identifying) a Request for Continued Examination
(RCE) as an “Amendment” when filing an RCE
Avoid identifying papers after the initial filing as “new”
Avoid common PCT filing mistakes
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Provide application identifying information. Identifying follow-on
papers as “new” results in a new application serial number being
generated.
When filing a PCT, be sure to attach form RO/101, to use A4 size
paper and, when filing 35 USC § 371 National Stage application, be
sure to provide the correct PCT Application Number.
Submit black and white images with a resolution no larger than
300X300 dpi.
United States Patent and Trademark Office
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Publication will generally include all preliminary amendments
submitted in time to be included in the publication.
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When filing a utility or plant application consider filing a
conspicuous request for nonpublication if the invention has not
been and will not be the subject of an application filed in another
country (or under international agreement) that requires
eighteen-month publication
Consider using using PTO form PTO/SB/35 to request
nonpublication.
A nonpublication request after filing is not permitted.
United States Patent and Trademark Office
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Practitioners must include the assignment information in the
transmittal letter or ADS.
Avoid misspelling the names of inventors or assignees.
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Double check this information prior to filing since the documents
provide the data used for publication. Republication for
Applicant’s mistake requires payment of a fee.
If practitioner does not include assignment info in transmittal
letter or ADS the publication will not contain such
information.
File timely requests that identify the materiality of the
errors.
United States Patent and Trademark Office
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Examination Processing Tips
General Prosecution Advice
Amendments to the claims and/or specification should be accompanied
by a written statement indicating specific support for the change.
If the support is implicit, an explanation is beneficial.
In response to restriction requirements, where inventions are
indeed patentably indistinct, applicants should present arguments
to that end.
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Avoid sending the request separate from the Notice of Appeal.
Avoid making a request when there is an outstanding after-final
amendment.
Avoid attaching more than five pages to the cover form.
Avoid sending in a supplemental request.
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The request must accompany the Notice of Appeal or it will not be
considered.
File a request only in an application were no outstanding
after-final amendment or other argument was previously
submitted
File only five additional pages with the cover form. It does not
matter what is on the pages. The Technology Center counts the pages
and if there are over five, the request is dismissed.
Supplemental requests will not be treated.
Request that the previously paid Notice of Appeal fee be reapplied
for the current Notice of Appeal. If prosecution is reopened and
another final rejection is made, there is no need for a second
Notice of Appeal fee if the application is again appealed.
United States Patent and Trademark Office
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Consider prosecuting an improved CIP invention independently of the
prior invention:
File, if need be, a continuation only to the original invention, or
take an appeal on the original invention, and
File a new application, rather than a CIP, for only the new
invention:
without a benefit claim (35 U.S.C. §120, 37 CFR § 1.78) to the
initial application, and
therefore without shortening the patent term of the initial
invention if it were to be included in the CIP application,
as
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Post Allowance Tips
Issue Fee Payments
Avoid filing an Information Disclosure Statement (IDS) after
payment of the issue fee.
File an IDS filed after payment of the issue fee with a Petition
for Withdrawal from Issue (37 CFR 1.313(c)) and an RCE (37 CFR §
1.114). Otherwise, the IDS will be placed in the file and the cited
documents will not be considered by the examiner.
Avoid delays in paying the issue fee.
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A certificate of mailing under 1.8 may be used by practitioners in
the United States, but this option is not available to
practitioners filing documents in the US from another
country.
United States Patent and Trademark Office
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Post Allowance Tips
Withdrawal from Issue
Petitions to Withdraw from Issue may be hand carried or sent via
facsimile to the Office of Petitions.
Hand carries should be brought to the security guard station of the
Madison West building, 600 Dulany Street, Alexandria VA
22314.
The facsimile number for the Office of Petitions is (571)
273-0025.
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The security guard will call the Office of Petitions, located on
the 7th floor, at (571) 272-3282 for delivery assistance. Hand
carried papers will be accepted on business days between the hours
of 8:30 a.m. and 3:45 p.m.
United States Patent and Trademark Office
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Virtual Art Unit Pilot
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Over 1,250 examiners participating in the Patents Hoteling Program,
since initiated in 2006
Program allows examiners to work from home 4 days per week with
USPTO electronic tools
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Over 2300 laptops distributed through Patent Examiner Laptop
Program (PELP)
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Virtual Art Unit Pilot
USPTO Pilot to evaluate the feasibility of establishing “virtual
art units”
Conducted April 2007 - September 2007
13 Examiners and 1 SPE at home
received full PHP equipment
received collaboration tools and training
Random reviews by Office of Patent Quality Assurance
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Conducting focus sessions and interviews to obtain insight and
feedback
Patentee / Trade Organization / User Input
Wants and Needs for IP Protection
Different Levels of Examination / Protection
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Patent Prosecution Highway (PPH)
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Peer Review Pilot
1 year pilot (began June 15, 2007) for members of the public to
submit prior art with commentary, using Internet peer review
techniques, in volunteered published applications to a public
website ( www.peertopatent.org )
75 applications volunteered
(avg. was 4)
Pilot extended 1 year to include Business Methods – Class 705
Encourage more participation
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Participation requires:
file application using electronic fling system;
agree to interviews
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Minimum number of days to complete
prosecution: 18
Participants’ response & comments positive
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First Action Interview Pilot
Applicant requests to participate, as of July 5, 2008, 279
applicants have joined the pilot
Application is NOT taken out of turn
“Preliminary office action” is prepared and mailed to applicant –
condensed version of typical first action on the merits
After interview applicant receives copy of action or allowance with
entry of proposed amendment
Piloted in two workgroups of TC 2100
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External Quality Metrics
USPTO working with external customers to develop quality metrics of
relevance
Future stakeholders surveys
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“Applicants (and attorneys) must take responsibility for quality
application preparation and prosecution and not rely solely on the
examiner.”
Applicant Quality Submissions (AQS)
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H.R. 1908 (passed by House on September 7, 2007)
‘‘§ 123. Additional information
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§ 123. Additional information; micro-entity exception
(a) IN GENERAL.—The Director shall, by regulation, require that an
applicant for a patent under this
title submit to the Director—
(1) a search report and analysis relevant to patentability;
and
(2) any other information relevant to patentability that the
Director, in his discretion,
determines necessary.
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2005 result: 2.2% of applications filed electronically
2006 result: 14.3% of applications filed electronically
2007 result: nearly 50% of applications filed received through
EFS-Web; over 1,000,000 (total) follow-on papers and new
applications received
3rd Qtr 2008: 69.8% of applications filed electronically
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Safe, Simple, Secure
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PATENT PRACTICE TIPS USPTO
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Priority Document Exchange Tips
Do provide a valid power of attorney with a submission for
permission to access
*
We are seeing submissions for permissions for access that do not
have a proper power of attorney, this if often seen in provisional
applications.
United States Patent and Trademark Office
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Fee Payment Tips
Avoid placing a stop payment on a check for USPTO services or to
circumvent the rules of practice. This action is not
appropriate.
Request a refund (37 CFR § 1.26) where fees were paid by mistake or
in excess of the amount required.
Avoid drafting a check to the USPTO for services on an account with
insufficient funds.
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Fee Payment Tips
Do use a Deposit Account Number on a transmittal form authorizing
payment
Do not use a Customer Number to authorize payment of fees.
Be clear with payment authorization statements.
Avoid contradictory statements on payment
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A common error arises when a customer number is used on an
authorization transmittal sheet, rather than a deposit account
number.
We also see contradictory statements on transmittal sheets, such as
“fee not provided”, yet there is a blanket authorization statement
to charge a deposit account for any fees under 1.16 or 1.17.
United States Patent and Trademark Office
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Maintenance Fees/Deposit Accounts
Maintenance fees and replenishing of deposit accounts at the USPTO
can be done online: https://ramps.uspto.gov/eram
Inquiries related to deposit accounts, maintenance fees and refunds
may be directed to the Office of Finance (571) 272-6500.
United States Patent and Trademark Office
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Present all cogent arguments and evidence before final
rejection
If the examiner is believed to be ignoring a claim limitation, a
personal or telephonic interview may facilitate the prosecution to
completion.
United States Patent and Trademark Office
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Prosecution Tips (cont’d)
Don’t initiate a response on the absolute last day of the statutory
period, if possible.
Don’t personally attack the Examiner in a response to Office
Action.
Follow the chain of command for assistance:
First, call the Examiner.
If he or she is non-responsive or unavailable, contact the
Supervisor.
If the issue is still not resolved, contact the Technology Center
Director.
United States Patent and Trademark Office
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http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
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Helpful Web Pages:
Notices, Recent Patent-Related – a very current list of all Federal
Register, Official Gazette and pre-Official Gazette notices, and
certain Office memoranda:
http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
Forms Page – current USPTO forms available for use by the Public:
http://www.uspto.gov/web/forms/index.html
Manual of Patent Examining Procedure (MPEP):
http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
United States Patent and Trademark Office
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Mailing Addresses and Mail Stops:
http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm
Facsimile Numbers:
http://www.uspto.gov/web/offices/com/sol/og/2005/week42/patcorr.htm