CHAPTER 3 FILING A NONPROVISIONAL UTILITY APPLICATION...serious indeed, up to complete invalidity of a patent and loss of patent rights due to fraud on the patent office. Small Entities

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CHAPTER 3 FILING A NONPROVISIONAL UTILITY APPLICATION Below is a list of documents generally needed to file a completed nonprovisional utility patent application. Some of these documents are optional, and some can be submitted later. 1) A Transmittal sheet (PTO/SB/05) 2) A fee transmittal (PTO/SB/17) 3) An ADS (including any priority claim) 4) A specification with claims and drawings, if required 5) An oath or declaration (often filed later) 6) Fees, including basic filing fee, search fee, and examination fee (often filed later) 7) An Information Disclosure Statement and Form 1449 (often filed later or not at all) 8) A Power of attorney (often filed later) 9) Assignment and Assignment Cover Sheet (optional, and usually filed later) Ch.3/A (1): The Transmittal Sheet Transmittal sheets are optional when filing using EFS-Web. You can use the USPTO form PTO/AIA/15 (or PTO/SB/05) Utility Patent Application Transmittal (see below), or your firm may have its own transmittal. If the firm you work for has its own transmittal, it may be combined with the fee calculation sheet. The transmittal should be filled out completely. At the top there are spaces for the attorney docket number, name of the first inventor, title of the invention, and Priority Mail Express number (if filing by mail). Under the APPLICATION ELEMENTS section there are a number of check boxes detailing the parts of the application, the number of pages of specification (including claims and abstract), and number of pages of figures, the ADS, etc. Do not forget to check the Applicant claims small entity status box, if appropriate. There are also boxes for CDs, etc. if the application contains a computer program or biological sequence data. Fill out the ACCOMPANYING APPLICATION PARTS section on the right hand side, not forgetting to check the return receipt postcard box if you are filing by mail.


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Example: Utility Patent Application Transmittal (PTO/AIA/15)


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In section 19, complete the correspondence address information. You will very likely be entering a customer number here. Some people include both the customer number and the full address information, just to avoid any confusion caused by a possible transcription error when copying the customer number at the patent office. Lastly, make sure that the signature block is properly filled in, signed, and dated and that the attorney‟s registration number appears correctly. If using a custom transmittal it may also include a safety net fee authorization (MPEP 710.02e) requesting that the USPTO charge all required extension of time fees to the applicant's deposit account. This prevents accidental abandonment of an application if a required petition for extension of time is inadvertently not sent with a response to an Office Action. Further, it is wise to include a statement that authorizes the Commissioner for Patents to charge any excess fees to the deposit account and to credit any excess fees to the deposit account. If not included on the transmittal, such a safety net authorization may be included on a separate Fee Calculation sheet or on a cover letter. Ch.3/A (2): The Application Data Sheet (ADS) A nonprovisional application should include an Application Data Sheet. Under the AIA, all US and foreign priority claims must be set forth in an ADS. Under the old rules you had to state domestic priority in the first paragraph of the application, and you had to state foreign priority in the declaration. But the new rules require that all priority claims must be made on an ADS or they will not be recognized. The only exceptions where you do not have to file an ADS to claim priority are when filing (1) an RCE (Request for Continued Examination), (2) a PCT, and (3) a US national stage entry application under 35 USC 371 when the PCT filing date (international filing date) is before September 16, 2012. However, we recommend that you always file an ADS, whether it is strictly needed or not. If priority is not claimed or incorrectly claimed in the ADS you have only 16 months from the priority date or four months from the date of filing to correctly claim priority. See MPEP 211.03; 37 CFR 1.78. If you miss this date, you may be able to file a petition, which is expensive. Claiming priority in the declaration does not count any more. An Application Data Sheet must be filed: (1) To make any benefit/priority claims under 37 CFR 1.78 and foreign priority claims under 37 CFR 1.55 (except applications entering the national stage under 35 U.S.C. 371). (2) To identify applicants who are not inventor(s). (3) To state the inventorship where a signed declaration is not being filed at the same time as the application. Note that using an ADS permits postponing the declaration, which must then be filed no later than the date on which the issue fee is paid.


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(4) To set the inventorship where there are joint inventors and each joint inventor is executing a separate declaration. Basically, we recommend that you always use an ADS for every US application you file unless you are 100% certain you do not need one. Always use the latest version of the Application Data Sheet form PTO/AIA/14. An ADS is usually completed before filing with the other application documents and is filed in the form of a .pdf document. On the other hand, when you file certain applications, you may be given the option of completing an ADS as a screen-fillable form.

The USPTO suggests that you use and submit the web-fillable form via EFS-Web, because doing so will cause the bibliographic data to automatically load into USPTO database. Scanning or printing the ADS document as a .pdf with a program such as CutePDF or Adobe Acrobat will require USPTO staff to have to manually enter the data. In the EFS-Web system, when you attach and upload a .pdf version of the ADS form, you will receive a yellow triangle and a warning that “This is not an USPTO supplied ADS fillable form.” It is, though, perfectly acceptable to file a .pdf (watch out for changes to this rule), and even if you do submit a .pdf, the data will all be entered.

For an example of an ADS and further discussion of why it is used and how to complete it, see Chapter 2. Particularly look at the rules about correcting the ADS and improperly signed ADSs. Go back and read the relevant part of Chapter 2 before you continue.


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Ch.3/B: Fees All the current fees are set out on the USPTO website at www.uspto.gov. Calculating the total filing fee is a matter of adding up all the separate fees. All fees are paid by default as Large (normal, non-discounted) Entity, but if the applicant/application qualifies, there are discounts for Small and Micro entities. Ch.3/B (1) Small Entity and Micro Entity Status Small Entity Fee Status: The USPTO provides a discount of 50% for applications with Small Entity status. The Small/Large/Micro Entity status refers to the beneficial owner of the patent rights, not just to the inventor or the original applicant. So if the inventor or applicant originally qualified as a Small or Micro Entity but has since assigned, granted, sold, or given rights (for example, a license) to a Large Entity, the application does not qualify for Small Entity status. Be careful that you do not say that the applicant is a Small or Micro Entity when it is not, because the consequences of claiming Small Entity status when you are not can be very serious indeed, up to complete invalidity of a patent and loss of patent rights due to fraud on the patent office. Small Entities are generally individual inventors, small companies with fewer than 500 employees, and universities. Because the actual definition is quite complex and confusing, if in doubt, ask your attorney to figure it out. Claiming Small Entity status is done by checking the appropriate box on the transmittal and selecting the appropriate fee status when paying fees using EFS-Web. A separate Small Entity Declaration may also be used, but the USPTO no longer provides a specific form. Once you have established small/micro entity fee status for a particular application, you can continue to pay small/micro entity fees until you (a) file a continuation, divisional or CIP, or (b) file a reissue application, or (c) pay the issue fee, or (d) pay any maintenance fee after the patent issues. Before any of these actions you must make a new determination of fee status. See 37 CFR 1.27(f) and (g). Importantly, remember that the small/micro fee status is related to the owner of the patent rights, not the inventor(s). If the owner has a granted rights to a non-small/micro entity, then the owner cannot claim small/micro entity fee status. An application generally qualifies for Small Entity status fees if it fits one of these criteria: (a) All the owner(s) are individuals who have not assigned, conveyed, or licensed the invention to a Large Entity and are under no obligation to do so.

http://www.uspto.gov/


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(b) The owner is a small business concern under Small Business Association definitions, with 500 or fewer employees. (c) The owner is a nonprofit organization such as a university or other scientific institution or institution of higher education located in any country or an organization that has nonprofit tax status under section 501(c)(3) of the Internal Revenue Code. (d) The owner is any nonprofit organization located in a foreign country which would qualify as a nonprofit organization if it were located in this country. Of course, if the owner is one of the above but has licensed the invention to a Large Entity, the application does not qualify for Small Entity status. Micro Entity Fee Status: Micro Entity status was created under the AIA and has been available since March 19, 2013. The Micro Entity 75% discount applies to US and international (PCT) applications for fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. It can save the applicant a great deal of money. Micro Entity status may be given to applicants who are employees or assignors of universities in the US, and to individuals who have not filed many applications before and have incomes under a certain threshold (less than three times the US median income). As a pre-requisite for Micro fee status, the application must always satisfy the requirements for Small Entity status. If the applicant is a university, it cannot claim micro entity status. If, however, you list the inventors as the applicants, and those inventors are employed by, or have assigned to, or are under an obligation to assign to the university, then you can claim micro entity status. In his case the university can still be the non-applicant assignee. Micro Entity status is available for both AIA and pre-AIA applications. Remember to check that the fee status has not changed when you enter a new fee-paying stage of the application, such as allowance or maintenance. There are two ways of qualifying for Micro Entity fee status, and you must use the correct USPTO form (see below) to certify that the application qualifies: PTO/SB/15A (Certification of Micro Entity Status - Gross Income Basis). Applicant has limited income and has been named on fewer than four previous US nonprovisional applications (see exceptions, below). 37 CFR 1.29(a). PTO/SB/15B (Certification of Micro Entity Status–individual employed by or assigning to an Institution of Higher Education Basis). Applicant is an individual employed by or under an obligation to assign to a US institution of higher education. 37 CFR 1.29(d). Keep in mind that if a university is the applicant, it cannot get Micro Entity status. The


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inventor-employee/assignee must be the applicant. The university can still be the non-applicant assignee.


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PTO/SB/15A Certification of Micro Entity Status - Gross Income Basis


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PTO/SB/15B Certification of Micro Entity Status - Institution of Higher Education


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Micro Entity - GROSS INCOME BASIS (PTO/SB/15A) (i) The application must first qualify as a Small Entity. (ii) Neither the applicant, the inventor, nor any joint inventor can have been named on more than four previously filed patent applications, but the following types of application do not count:

(a) Foreign applications (not filed in the USA) (b) US provisional applications (c) PCT applications that were never filed as US national phase applications (d) Applications filed as part of prior employment (to another employer, not including the present employer), where the applicant/inventor was under an obligation to assign all ownership rights in the application

(iii) Neither the applicant, inventor, nor any joint inventor can have had gross income in the preceding calendar year exceeding three times the median household income for the preceding year. This is $160,971, as of December 2015. You do not have to total up all the inventors‟ incomes. If you have 10 inventors, none of whom make more than the threshold amount, the application would still meet the income threshold. (iv) The applicant/inventor has not assigned or sold and is not under an obligation to assign or sell an interest (even a partial interest) in the invention to an entity that had a gross income in the preceding calendar year in excess of the gross income limit. Micro Entity - INSTITUTION OF HIGHER EDUCATION BASIS (PTO/SB/15B) (i) The application must first qualify as a Small Entity. (ii) Applicant must be an employee of a US institute of higher education from which it obtains the majority (more than 50%) of its income; or the applicant must have assigned or be under an obligation to assign all its rights to an institute of higher education. (iii) The applicant/inventor has not assigned or sold and is not under an obligation to assign or sell an interest (even a partial interest) in the invention to a Large Entity. This is not spelled out in the rules, but if the invention had been assigned to a Large Entity, they would not qualify as a Small Entity and, therefore, cannot possibly qualify for Micro Entity status. Oddly, if the applicant/inventor assigns to a Small Entity, it does not disqualify him/her from Micro Entity fee status. Under the institute of higher education qualification, there is no limit to the number of applications that can be claimed as a Micro Entity. An institute of higher education includes universities in the 50 States as well as Puerto Rico, the District of Columbia, Guam, American Samoa, the United States Virgin Islands, the Northern Mariana Islands, the Republic of the Marshall Islands, the


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Federated States of Micronesia, and the Republic of Palau. It does not include non-US universities. One very counter-intuitive effect of the Micro Entity rule is that if a university is the APPLICANT it cannot claim Micro Entity status, even though the inventors would all qualify as individuals because they are university employees/assignees. This seems completely contrary to legislative intent, and we hope that it will be corrected, but for now, if you are filing for a university and want to pay Micro Entity fees, you must not name the university as the applicant on the ADS or when completing information on EFS-Web. The inventors should be named as the applicant for the Micro Entity discount to be available. The university may still be the non-applicant assignee. The reasoning is this: a university-applicant will not qualify as a Micro Entity under the institution of higher education definition because the applicant must (i) be an employee of the institution of higher education and obtain the majority of his or her income from that institution or (ii) be a transferor of ownership rights to such institution. A university itself would not meet either (i) or (ii). If you pay any Micro Entity fees in error, you will have to correct it. This is how: For each application for which you accidentally paid Micro Entity fees, submit a letter explaining the error and stating that it was without any deceptive intent, itemizing all the fees (exam, search, filing, extension of time, etc.), show the amount paid, the date paid, the amount that should have been paid and fees due, and authorizing payment from a deposit account. If appropriate, add a Small Entity Statement. Who may sign forms PTO/SB15A and PTO/SB15B? The certification of Micro Entity status forms (PTO/SB/15A and PTO/SB/15B) may only be signed by an authorized party as set forth in 37 CFR 1.33(b). Thus, the only parties who may sign are

- A registered attorney or agent representing the client - An inventor who is named as the sole inventor and is the applicant - All joint inventors who are applicants. Joint inventor applicants should each sign a separate copy of PTO/SB/15A.

An officer of an assignee corporation or organization is not authorized to sign a certification of Micro Entity status form. For more information on Micro Entity fees see 35 U.S.C. 123 and 77 CFR 75019. For frequently asked questions about AIA provisions, see http://www.uspto.gov/aia_implementation/faq.jsp#heading-6. Ch.3/B (2) Fees Payable when Filing a New Nonprovisional Patent Application When filing a new nonprovisional patent application, there are three separate fees that must be paid at the same time. They are clearly set out and separated in the USPTO fee schedule. These fees are:

http://www.uspto.gov/aia_implementation/faq.jsp#heading-6


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1) the FILING FEE, 2) the SEARCH FEE, and 3) the EXAMINATION FEE. There is another fee that may have to be paid, depending on the number of pages in the application, called the application size fee, which must be paid for each additional 50 sheets that exceeds 100 sheets, total. See 37 CFR 1.16(s). Moreover, excess claim fees are assessed for independent claims in excess of three and for total claims in excess of twenty. See 37 CFR 1.16(h) and (i). Despite the fact that the fee structure breaks up the fees into different types, for now all the above fees must be paid at the same time. It may be that in the future the United States would institute a deferred examination system (as in certain other countries) so that an application may be filed but not searched or examined until later, when additional fees have been paid. Penalty for paper filing: Under the America Invents Act (AIA), from November 16, 2011, there is an additional $400 fee ($200 for Small Entities) for applicants who do not file utility patent applications electronically (Sec. 10(b)). We expect that you will be using electronic filing most of the time. Ch.3/B (3) Fee Transmittal (PTO/SB/17) The USPTO has a standard Fee Transmittal Form (PTO/SB/17), but it is optional. Many firms use their own custom fee transmittal. Some practitioners do not use a fee transmittal at all, since all fees are calculated online when filing using EFS-Web and a fee sheet is automatically generated for the USPTO records. Not using a fee transmittal will not prejudice your application in any way. As well as the standard fee transmittal form (PTO/SB/17), the USPTO uses a number of different forms to calculate fees, none of which is particularly ideal for easy fee calculation. The main additional fee forms include PTO/SB/06 (Patent Application Fee Determination Record), PTO/SB/07 (Multiple Dependent Claim Fee Calculation Sheet), PTO/SB/17i (Processing Fee under 37 CFR 17(i) Transmittal), and PTO/SB/17p (Petition Fee under 37 CFR 17(f), (g) & (h) Transmittal). Have a look at each of these.


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Example: Fee Transmittal (PTO/SB/17)


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The Fee Transmittal Form (PTO/SB/17) contains a table of fees that allows you to add up the total fees required for either a Small Entity or a Large Entity applicant (see example). Section 1 has instructions for calculating the application filing fee (or national fee), the search fee, and the examination fee. Section 2 contains instructions on how to calculate the excess claim fee. Section 3 is for the application size fee. Section 4 is for other fees, such as for submitting a non-English specification. Always remember to check the Small Entity box when appropriate. Ch.3/B (4) Calculating Fees and Counting Claims The amount of the excess claim fee depends on the number and type of claims submitted in the application. There is no limit to the number of claims you can file, so long as the correct fees are paid. To calculate the correct fee, you will need to learn how to count claims. This means that you must be able to determine not only how many claims there are, but also how many are independent, how many are dependent, and how many are multiple dependent. A dependent claim is one that refers to (depends from) another claim. An independent claim does not refer to another claim. It is quite painless to understand when we use an example. Here is an independent claim: Claim 1. A writing instrument comprising a tubular wooden outer casing and an elongated inner graphite rod encased within said outer casing. And here is a dependent claim: Claim 2. The writing instrument of claim 1, wherein the graphite rod further comprises a blue pigment. As you can see, claim 1 (to a pencil) is independent,; it stands on its own and does not refer to any other previous claim. Claim 2 (to a blue pencil) is a dependent claim, because it refers to and depends from Claim 1; i.e., it starts with the phrase, "The writing instrument of claim 1…." A dependent claim must incorporate all the elements (limitations) of the claim from which it depends and must add a further limitation. Multiple dependent claims are rarely used in US practice because they are expensive, though they are common in foreign applications. They are dependent claims that depend from two or more other claims. For example: Claim 3. The writing instrument of Claim 1 or 2, further comprising a rubber grip covering at least a portion of the outside casing. The basic filing fee covers up to twenty claims in total, with a maximum of three independent claims and no multiple dependent claims. Additional claims may be filed,


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but an excess claim fee is required. Consequently, you will sometimes see this format if the attorney is trying to keep filing costs to a minimum. How do you calculate the excess claim fee? If your application has more than 20 claims in total, more than three independent claims, or any multiple dependent claims, you will have to pay an additional excess claim fee on top of the basic fee. The amount of the additional excess claim fee depends on the number of excess claims and is easily calculated using the table in the fee transmittal. The application size fee is payable on an application in which the specification (including claims and abstract) and the drawings combine to exceed 100 sheets of paper. Electronically filed sequence listings or computer code listings do not count towards the total. A set size fee is payable for each additional 50 sheets of paper, or fraction thereof, in excess of 100. Here are some examples of how the fee is calculated: Example: Applicant files a utility patent application including 25 total claims and four independent claims. The application includes 70 pages of specification and drawings, and the applicant does not qualify for a Small Entity discount. The applicant pays

basic filing fee (Large Entity), search fee (Large Entity), examination fee (Large Entity), fee for one extra independent claim (Large Entity), and excess claims fees for five additional claims (Large Entity).

If you calculate the claim fees incorrectly, USPTO‟s Office of Patent Application Processing (OPAP), formerly Office of Initial Patent Examination (OIPE), will likely spot the error and send the applicant a notice (often a Notice to File Missing Parts) requesting that the excess fee be paid. You will also be asked to pay a surcharge fee (1.16(f)) for late filing of the correct fee. If the fee has been paid overpaid, the USPTO will refund the excess amount, if they catch it. Do not forget to check the Small Entity box, if appropriate. And do not forget that there is an additional $400 fee ($200 for Small Entities) for applicants who do not file utility patent applications electronically. Ch.3/B (5) Paying Fees, Refunds and Financial Manager Online Payment and Fee Management System Fees are usually paid using EFS-Web at the time of filing, immediately after filing the application. Although you will usually be paying the fees at the time of filing, in many cases fees do not have to be paid at the time of filing and are often paid after the


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application is filed, sometimes in response to a Notice to File Missing Parts, which we will discuss later. The fees for filing an application include the application filing fee, the search fee, and the examination fee, as well as any excess claim fee and application size fee that may be due (see above). All these fees should be paid together, not separately. You can send fees to the USPTO in many forms, as long as it is in US dollars. The USPTO accepts -Payments authorized from your deposit account -credit cards (using PTO Form 2038 or the online payment page, if applicable), -check,* -cashier‟s or certified check,* and -United States Postal Service Money Orders.* *Checks and money orders should be made out to The Commissioner for Patents. Deposit accounts and credit cards can be set up in the Financial Manager. If you are filing by paper and wish to pay by credit card using a paper form, see below. Note that this form should NOT be filed via EFS-Web, where the credit card number could become public information at some point.


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Example: Credit Card Payment Form

Refunds For various reasons you may request a refund. See 37 CFR 1.26. For example, you may pay a fee by mistake or in excess of that required, such as if you pay Large Entity fees when you should have paid Small or Micro Entity fees. A change of purpose after the


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payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, does not entitle a party to a refund of such fee. It basically has to be a mistake. The Office will not refund amounts of $25 or less unless a refund is specifically requested. You have to authorize a method of payment, such as by credit to your deposit account or to a credit card. Any request for refund must be filed within two years from the date the fee was paid. When you do request a refund, you should supply any documentary evidence that you think is helpful, such as records of payments and fee calculation sheets, and, of course, all the applicant information. Ch.3/C: Claims At least one claim must be filed for all types of application except for a US provisional application. See MPEP 601. Despite this, just to be cautious most patent practitioners include at least one claim, even in a provisional application, in case they should fall afoul of the national law of a non-US country that requires at least one claim to be present in all applications. There is no limit to the number of claims an applicant can file in a single application, although they should be "substantially different from each other" and not "unduly multiplied" (see 37 CFR § 1.75(h)). There are considerable excess claim fees for filing more than three independent or more than 20 total claims, and there are large extra fees for filing multiple dependent claims. The rules pertaining to European applications favor only 15 claims or fewer, so applications drafted by experienced attorneys with a view to subsequent international or European filings will often contain just 15 claims. Claims are set out at the end of the specification. The claims should "particularly point out and distinctly claim the subject matter which the applicant regards as his invention or discovery." They must commence on a separate physical sheet or electronic page, and any sheet including a claim or portion of a claim may not contain any other parts of the application. Where a claim lists a number of elements or steps, each element or step of the claim should be separated by a line indentation (see 37 CFR § 1.75(h)). The claims should be numbered with consecutive Arabic numerals (1, 2, 3, etc.). Claims may be independent, dependent, or multiple dependent, as explained elsewhere in this course. Ch.3/D: The Specification (with drawings, if required) The specification is the written description of the invention, including drawings and claims, and is absolutely essential to get a filing date. In fact, it is almost the only truly essential thing you need in order to get a filing date. So long as you send in a complete specification (with at least one claim) and some way of identifying the applicant, the USPTO will probably accept the application and give you a filing date corresponding to the date that the application was received at the USPTO. Everything else could, theoretically, be sent later. However, such a filing strategy would be immensely irresponsible and we don't suggest it.


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Note that the word specification does not seem to have a fixed meaning and is often used to refer alternately to describe the description either with or without claims, abstract, or drawings. Please be sure to check the intended meaning of this word if it seems unclear in the context being used. Possibly the worst mistake you can make when filing an application is to accidentally leave out one or more pages of the specification or drawings. This is because a filing date pertains only to the invention actually described in the specification as received. Let's explain this. Suppose an inventor has invented a revolutionary new type of car engine. You file the application on February 1, but you accidentally leave out a page. The missing page describes an essential feature of the engine, not described anywhere else in the application. Without this feature an engineer reading the specification could not understand how to make the engine. You discover your mistake three months later, and immediately send in the missing page on May 1, explaining the error and asking them to put the page in the file. Unfortunately for you, the USPTO will NOT let you pretend that the missing page was sent in with the first filing. The USPTO will give the completed application the later filing date of May 1, not February 1. You may ask, "What difference will three little months make?" A large one. If some other applicant has filed a patent application on the same type of engine between February 1 and May 1 it may be very difficult or even impossible to obtain a patent in view of the other applicant's earlier filed application. This type of error is probably one of the most frightening scenarios in patent administration, and it can easily occur due to a page being lost during the final photocopying or scanning of the application. That is why every page of the application should be counted after copies or scans have been made. The specification (see MPEP 601 and 608.01) is made up of a number of standard sub parts. Have a look at an actual application. The specification is generally set out in the following (or similar) format: 1. Title Titles are usually short, concise and descriptive and must be no more than 500 characters long, including spaces. 2. Government Support Clause If the invention has been sponsored by the US government, through a research grant, for instance, a statement must appear at the beginning of the application stating, “This invention was made with government support under [identify contract] awarded by [identify the Federal agency]. The government has certain rights in the invention.” See 37 CFR 401.14(f)(4). 3. Cross Reference to Previous Application (if any) In this optional paragraph, the applicant tells the examiner whether the application is related to any previous application(s), and whether it claims priority from an earlier filed application. Claiming priority from an earlier application is also referred to as claiming the benefit of that previous application. Before the use of the ADS, this section was


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essential to claiming priority, but now, all priority claims should be set out in the ADS and this section is optional. Here is an example of statements cross-referencing related applications, including a proper incorporation by reference: "This application claims the benefit of the filing date of US Provisional Application Ser. No. 61/426,137, filed Nov. 14, 2012, entitled „Combinatorial Pooling Approach for siRNA Induced Gene Silencing and Methods for Selecting siRNA,‟ and US Provisional Application Ser. No. 61/502,050, filed Sep. 10, 2013, entitled „Methods for Selecting siRNA,‟ the entire disclosures of which are hereby incorporated by reference for all purposes into the present disclosure." Remember that all US priority claims under 37 CFR 1.78 and foreign priority claims under 37 CFR 1.55 must be set forth in the ADS. 4. Background of the Invention This section tells the examiner what was generally known in the field of the invention before the filing of the application. This is not the place to write about the invention itself. 5. Summary of the Invention This is a short description, summing up the main points of the invention, and often paraphrasing the claims. 6. Brief Description of the Drawings In this section, the drawings, pictures, or graphs (also called figures) are described and explained, along with reference to any numbered parts of elements. 7. Detailed Description of the Invention This is the bulk of the specification, where the invention is described in great detail, often followed by examples of the various versions (embodiments) of the invention. 8. Claims The claims are written in a highly stylized, legal way and precisely define the invention. There may be any number of claims, from one to more than a hundred. Note: if you do not supply at least one claim in a nonprovisional application, you will not get a filing date. Provisional applications, however, need not have any claims. 9. Abstract This is a single paragraph (up to 150 words) summarizing the invention. When the patent eventually issues, the abstract will appear at the beginning of the patent document, right after the title.


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10. Drawings The drawings (also called figures) may be of any type, including engineering drawings, graphs, or flow charts. Applicant information must be placed in the center of the top margin on the front side of all sheets. We will discuss drawing requirements more thoroughly later. Application format (fonts, margins, page numbering, etc.) is discussed in detail later. 11. Sequence Listing and Computer Code If your application is related to a biotech or to a computing related technology, the application may include a Sequence Listing or a Computer Program Appendix Listing. A Computer Program Appendix Listing is a list of computer codes. If it is over 300 lines long, it must be submitted on a CD (see 37 CFR 1.96 and 1.52e). The following operating systems may be used: MS-DOS, MS-Windows, Unix, or Macintosh. The file must not be compressed. Multiple computer program listings for a single application may be placed on a single compact disc. If the computer program listing is less than 300 lines long, with each line 72 characters or fewer, it may be submitted as a drawing or as part of the specification (37 CFR 1.96). If it is part of the specification but has more than 60 lines of code, it must be positioned at the end of the description, but before the claims. A Sequence Listing is almost always submitted as an ASCII text file via EFS-Web. The sequence listing is usually prepared using the USPTO PatentIn software. It can also be submitted on CD, as a .pdf submitted via EFS-Web, or on paper (see MPEP 2422.03). If you are not likely to be filing sequence listings, you can ignore the following paragraphs. You will not be tested on this information. When submitting a sequence listing using EFS-Web, you need to amend the specification to include, immediately before the Background section, a statement incorporating by reference the .txt file. You need to include the name of the text file, the date of its creation, and the size of the text file in bytes. See 37 CFR. 1.52e5 and 37 CFR 1.77b5. An example of such a statement is as follows:

“A sequence listing text (.txt) file is submitted herewith under 37 CFR. 1.821(c) and is hereby incorporated by reference in its entirely. The details of the file as required under 37 CFR. 1.52(e)(5) and 37 CFR 1.77(b)(5) are as follows: Name of file is ___.txt; date of creation is ___; size is ___ bytes. The content of the sequence listing information recorded in computer readable form is identical to the written sequence listing (if any) and identical to the sequence information provided with the original filed application and with the priority application, and contains no new matter. The information recorded in electronic form (if any) submitted (under Rule 13ter, if appropriate) with this application is identical to the sequence listing as contained in the application as filed.”


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A sequence listing must be submitted for all unbranched nucleotide sequences with ten or more bases, and all unbranched, non-D amino acid sequences with four or more amino acids. This includes all sequences described in the application, even if they are not claimed, e.g., PCR primers. Sequences that are to be claimed as part of the invention should be listed first. SEQ ID NO:1 should be the most important sequence. The official rules are confusing because they refer to requirements for filing paper copies of the sequence listing. According to 37 CFR 1.821, “A patent application which discloses nucleotide and/or amino acid sequences must contain both a paper copy of the sequence listing and a computer-readable form (CRF)”. However, no paper copy is actually necessary. The entire sequence listing, up to 100 MB, can be filed as an ASCII text file via EFS-Web. Anything bigger than that must be filed on CD. If filing a CD, the CD should include a label showing the name of the applicant, the title of the invention, the date recorded, and the operating system used. If you are submitting a sequence listing larger than 300 MB, you will need to pay substantial additional fees. The USPTO Mega-sequence listing fees are intended to discourage submission of non-essential sequence data. Fees are at two levels: 300-800 MB, and 800 MB or more. If an identical sequence listing has already been submitted in a related US or International (PCT) case, instead of submitting an ASCII text file via EFS-Web, you can submit a PDF or paper copy, and use form PTO/SB/93 to file a REQUEST FOR TRANSFER OF A COMPUTER READABLE FORM UNDER 37 CFR 1.821(e). https://www.uspto.gov/sites/default/files/documents/sb0093.pdf If you receive a Notice of Missing Parts (or Notice to Comply) requesting a sequence listing, you must include with it a statement indicating that the sequence listing does not contain any new matter that goes beyond the disclosure of the application as filed. Below is a table showing and explaining all the numeric identifiers. Items labeled “M” are mandatory. Items labeled “O” are optional. Numeric Identifier Definition Comments and format Mandatory (M) or

Optional (O)

<110> Applicant...................... Preferably max. of 10 names; one name per line; preferable format: surname, other names and/or initials. M.

<120> Title of Invention.......... ............................................................. M.

<130> File Reference............... Personal file reference......................... M when filed prior to assignment or appl. Number

<140> Current Application Number. Specify as: US 07/999,999 or PCT/US96/99999. M, if available.

<141> Current Filing Date....... Specify as: yyyy-mm-dd...................... M, if available.

<150> Prior Application Number. Specify as: US 07/999,999 or PCT/US96/99999.

M, if applicable include priority documents under 35 U.S.C. 119 and 120.

https://www.uspto.gov/sites/default/files/documents/sb0093.pdf


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Numeric Identifier Definition Comments and format Mandatory (M) or

Optional (O)

<151> Prior Application Filing Date. Specify as: yyyy-mm-dd ..................... M, if applicable.

<160> Number of SEQ ID NOs. Count includes total number of SEQ ID NOs................................................. M.

<170> Software....................... Name of software used to create the Sequence Listing. O.

<210> SEQ ID NO #............... Response shall be an integer representing the SEQ ID NO shown. M.

<211> Length........................... Respond with an integer expressing the number of bases or amino acid residues. M.

<212> Type..............................

Whether presented sequence molecule is DNA, RNA, or PRT (protein). If a nucleotide sequence contains both DNA and RNA fragments, the type shall be "DNA." In addition, the combined DNA/ RNA molecule shall be further described in the <220> to <223> feature section.

M.

<213> Organism......................

Scientific name, i.e., Genus/ species, Unknown or Artificial Sequence. In addition, the "Unknown" or "Artificial Sequence" organisms shall be further described in the <220> to <223> feature section.

M.

<220> Feature.......................... Leave blank after <220>. <221-223> provide for a description of points of biological significance in the sequence.

M, under the following conditions: if "n," "Xaa," or a modified or unusual L-amino acid or modified base was used in a sequence; if ORGANISM is "Artificial Sequence" or "Unknown"; if molecule is combined DNA/RNA.

<221> Name/Key..................... Provide appropriate identifier for feature, preferably from WIPO Standard ST.25 (1998), Appendix 2, Tables 5 and 6.

M, under the following conditions: if "n," "Xaa," or a modified or unusual L-amino acid or modified base was used in a sequence.

Numeric Identifier Definition Comments and format. Mandatory (M) or Optional

(O).

<222> Location........................ Specify location within sequence; where appropriate, state number of first and last bases/amino acids in feature.

M, under the following conditions: if "n," "Xaa," or a modified or unusual L-amino acid or modified base was used in a sequence.

<223> Other Information......... Other relevant information; four lines maximum.............................................

M, under the following conditions: if "n," "Xaa," or a modified or unusual L-amino acid or modified base was used in a sequence; if ORGANISM is "Artificial Sequence" or "Unknown"; if molecule is combined DNA/RNA.

<300> Publication Information Leave blank after <300>. O.

<301> Authors......................... Preferably max. of ten named authors of publication; specify one name per line; preferable format: surname, other names and/or initials.

O.

<302> Title............................... ............................................................. O. <303> Journal.......................... ............................................................. O. <304> Volume ......................... ............................................................. O. <305> Issue ............................. ............................................................. O. <306> Pages ............................ ............................................................. O. <307> Date.............. Journal date on which data published; specify as yyyy- O.


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Numeric Identifier Definition Comments and format Mandatory (M) or

Optional (O) mm-dd, MMM-yyyy or season- yyyy.

<308> Database Accession Number.

Accession number assigned by database, including database name. O.

<309> Database Entry Date........

Date of entry in database; specify as yyyy-mm-dd or MMM-yyyy. O.

<310> Patent Document Number.

Document number; for patent-type citations only. Specify as, for example, US 07/ 999,999. O.

<311> Patent Filing Date..............

Document filing date, for patent-type citations only; specify as yyyy-mm-dd. O.

<312> Publication Date................

Document publication date, for patent-type citations only; specify as yyyy-mm-dd. O.

<313> Relevant Residues............ FROM (position) TO (position)........... O.

<400> Sequence....................... SEQ ID NO should follow the numeric identifier and should appear on the line preceding the actual sequence.

M.


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Ch.3/E: Oath or Declaration Technically, an oath and a declaration are two slightly different documents that are used for the same thing, and you file either one or the other. An oath is a statement sworn out and signed in front of a Notary Public or other person authorized by the US government to administer oaths. The Notary witnesses, signs, and seals the oath by using an official seal (a rubber stamp). A declaration is usually used instead of an oath and is a statement made under written notice that willful false statements are punishable by fine, imprisonment, or both. In practice, only declarations are used, but they are often referred to as an oath or declaration. We will just call it the declaration. In law firms, the declaration has often been combined with the power of attorney and referred to as a Combined Oath & Declaration. The USPTO requests you do not use this anymore. Always use a separate declaration and power of attorney. Remember that if any USPTO form is altered for use by a practitioner, the statement regarding approval and the OMB number must be removed. Under the America Invents Act, an assignment that is signed by the inventor, wherein the assignment contains a proper declaration clause with all the required declaration language included (see below) and wherein the assignment is recorded in the USPTO EPAS assignment recordation system may be used in lieu of a separate declaration. In such case, the applicant may file a combined inventor declaration and assignment document in the patent office. Every US patent application (but not a PCT application) must include a signed declaration or substitute statement. The declaration is generally filed with or soon after the initial filing. But if you file an ADS (as you always should), you can postpone the filing of the declaration, which must then be filed no later than the date on which the issue fee is paid. If you are not using an ADS (not recommended), the declaration should be filed with the application, or soon thereafter. If you have not filed an ADS and not filed a signed declaration, you will get a Notice of File Missing Parts requesting the declaration and a small fee for filing the declaration late. If you use an ADS and decide not to file the declarations until just before the issue fee is paid, be careful, because it can be easy to forget. When you file the application, there is no date set for the issue fee; therefore, it is impossible, at the time of filing, to pre-docket the date to file the declaration. For this reason we suggest filing with the application, or soon thereafter. If you use an ADS but do not file the declarations you will, at some point, receive an Informal Notice telling you that a declaration is due no later than the deadline to pay the issue fee set out in any Notice of Allowability you may receive.


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The rule used to be that each and every inventor had to sign a declaration. If an inventor did not sign the declaration, evidence was required showing that the inventor had refused to sign, was unable to do so, or could not be found after a diligent search. But under the AIA, provided that certain conditions are met (usually if the inventor is deceased, refuses to sign, or cannot be found), a substitute statement functioning as a declaration can be filed by the assignee or a party showing sufficient ownership interest (usually the corporation for whom the inventor works) without the signature of the inventor. There are a couple of different USPTO Declarations forms, but you should always be safe if you use Form PTO/AIA/08 for any post-AIA application. This declaration form may be used with or without an Application Data Sheet (ADS). If an ADS is being used to identify all of the inventors, as it usually will be, PTO/AIA/01 may be used instead. A separate PTO/AIA/01 form must be used for each inventor, which is often very convenient. If using PTO/AIA/01, the ADS must be filed either at the same time, or it must have been previously filed. If you are not using an ADS, use Form AIA/08. The declaration requirement can be fulfilled by providing any one of the following signed documents: (i) A declaration signed by the inventor(s). (ii) A substitute statement for a non-signing inventor (§ 1.63(f) and § 1.64(d)). (iii) An assignment (which may be included in an employment contract) that contains a proper declaration clause, signed by the inventor (§ 1.63(e)(2)). For an inventor who refuses to execute or cannot be found after diligent effort, a substitute statement can be filed by (i) an assignee, (ii) a party to whom the inventor is under an obligation to assign, (iii) a party who otherwise shows sufficient proprietary interest in the matter, or (iv) the other joint inventor or inventors. For a deceased or legally incapacitated inventor, a substitute statement may be filed by one of the following: (i) The same parties as above, except other inventors. (ii) The inventor‟s legal representative. Once again, you CANNOT use a substitute statement if the application filing date (or international application filing date in the case of a 371 application) is before September 16, 2012. You have to use a much more cumbersome petition process (see 37 CFR 1.47). Examples of a declaration and a substitute statement are given below. Remember that for all applications with a filing date on or after September 16, 2012,

you must use one of the new declaration forms for all newly filed nonprovisional applications. You cannot continue to use the old declaration forms. This is because, as of


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that date, there is new statutorily mandated language that must be included in the declaration that is not included on the old declaration. The new statutorily mandated language includes: (1) a statement that the application was made or authorized to be made by the declarant, and (2) the acknowledgement of penalties clause for willful false statement must refer to imprisonment of not more than five years. For all applications with an original filing date before September 16, 2012, (including national filings of PCT applications) you must use the old pre-AIA (SB) declaration forms. Always use the right declaration! The rules are as follows: For an RCE no new declaration is required since an RCE is not a new application and continues to use the old application number and the declaration carries over. For a CIP you ALWAYS need to file a new declaration. For Continuations and Divisionals you must file a new declaration using the new AIA declaration format unless the prior declaration is already an AIA declaration. An old pre-AIA declaration will not carry over for a Continuation. For a national phase application filed under 371 you must use the old declaration (with citizenship statement) if the international filing date (not necessarily the priority date) is before September16,2012, but you must use the new AIA format declaration if the international filing date is on or after September 16, 2012. The USPTO is very strict about using the right declaration form, as well as about having the correct language in the declaration. The declaration states that (1) the signatory is an inventor, (2) the application was made or authorized to be made by the declarant, (3) the declarant acknowledges penalties for willful false statements. It further gives information about the application and applicants, including: (a) title of application, docket number, etc.;(b) the name of each applicant, which must include one family name and one given name. (For example, if the inventor's name is Richard Millhouse Nixon, you could enter "R. Millhouse Nixon" or "Richard M. Nixon" but not "R. M. Nixon.”); and (c) the residence address and mailing address, which is where an inventor customarily receives mail and may be its home, where the inventor works, or a post office box.

The declaration form may include a check box that authorizes various patent offices, including the European and Japanese patent offices, to access the patent application. This box is usually checked unless the applicant has a specific reason not to. This is a matter for the attorney. It is always a good idea to get started on the declarations well ahead of the time they will be needed. If one or more of the inventors lives abroad or is hard to contact, getting the declaration executed can be quite time consuming. Note that if there is more than one


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inventor, it may be convenient to have the declaration signed in counterpart, meaning that different inventors sign different, but identical, copies of the declaration. The signature pages can then be attached to the substance of the declaration and filed. Of course, if you file an ADS, the declaration(s) can be postponed, in which case the declaration(s) must be filed no later than the date on which the issue fee is paid. But by that time it may be harder to find the inventors for signature. So we recommend that you get the declarations signed and filed with the original application if you can. Note: To avoid payment of a surcharge, file a signed inventor‟s declaration or submit a substitute statement on the same day as you file the nonprovisional application. A Substitute Statement: Where an inventor‟s signature cannot be obtained on a declaration, a substitute statement PTO/AIA/02 (see below) may be filed for that inventor. See 37 CFR 1.64. If the inventor cannot be found, include the last known mailing address where the inventor customarily receives mail and his last known residence. The person signing a substitute statement must be an applicant under 37 CFR 1.43, 1.45, or 1.46 and one of the following: (i) A legal representative (for deceased or legally incapacitated inventor only). Check this box if the legal representative, e.g., executor, administrator, or heir, is signing the substitute statement for a deceased or legally incapacitated inventor. The legal representative must be an applicant and should be identified as an applicant in the ADS. (ii) An assignee. Check this box if the assignee who was named as the applicant in an ADS is signing the substitute statement on behalf of an inventor who is deceased, legally incapacitated, cannot be found or reached after diligent effort, or has refused to execute the oath or declaration. (iii) Person to whom the inventor is under an obligation to assign. Check this box if the obligated assignee who was named as the applicant in the ADS is signing the substitute statement. An obligated assignee is a party to whom the owner is under an obligation to assign (such as in an employment agreement) all or part of its right, title, and interest in the patent application. (iv) A party who is not an assignee but who shows a sufficient proprietary interest in the matter (petition under 37 CFR 1.46 is required). Check this box if a person who is not an assignee but who shows a sufficient proprietary interest in the matter and who was named as the applicant in an ADS is signing the substitute statement. A person who otherwise shows a sufficient proprietary interest must file a petition under 37 CFR 1.46 to be recognized as the applicant. Sufficient proprietary interest may be demonstrated by an appropriate legal memorandum, as discussed in the Manual of Patent Examining Procedure (MPEP), section 409.03(f).


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(v) A joint inventor. Check this box if a joint inventor is signing the substitute statement. Note: All of the inventors who are signing oaths or declarations must sign a substitute statement. A joint inventor may not sign a substitute statement on behalf of a deceased or legally incapacitated inventor. Despite a considerable amount of legal debate, it appears that an attorney of record, even with power of attorney, does not have authority to sign a substitute statement. The correct rule is not clear at this time. A substitute statement can only be filed in one of the following circumstances: (i) The inventor is deceased or legally incapacitated. (ii) The inventor refuses to sign the declaration. (iii) The inventor cannot be found or reached after diligent effort. You should use a new Form AIA/02 for each additional inventor who is deceased, legally incapacitated, cannot be found or reached after diligent effort, or has refused to execute the oath or declaration. Remember, you cannot use a substitute statement if the application filing date (or international application filing date in the case of a 371 application) is before September 16, 2012. Assignee’s Proof of Ownership of Rights: An applicant who is an assignee or obligated assignee (a person to whom the inventor is under an obligation to assign the invention) does not need to file a petition or provide proof of the pertinent facts in order to be named as the applicant or to execute a substitute statement. Even though proof is not required to be submitted to the patent office, proof of attempt to secure the inventor‟s signature should be kept in the applicant‟s file in case of future litigation. Assignments containing Inventor’s Declaration: An assignment that contains the statements required for a proper declaration can be used in place of the inventor‟s declaration. Such an assignment may be incorporated into employment contracts for technology companies. Practice tip: review your employment contracts and update them to include the required language for assignment and/or declaration. For the assignment to be used as a declaration it must be recorded. Recordation is preferably done using the Electronic Patent Assignment System (EPAS). When recording an assignment using EPAS, you need to have the application number, and, of course, you will not have that until the application is filed. So the recommended procedure is to 1. file the application via EFS-Web and obtain an application number, and 2. record the assignment using EPAS on the same day the application is filed to avoid a surcharge for delayed submission of the declaration.


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When recording an assignment that includes a declaration, always check the box in EPAS (see below) that says, “This document serves as an Oath/Declaration (37 CFR 1.63).” In this way you are notifying the PTO that the assignment is being used as the inventor‟s oath or declaration. The PTO will then place a copy of the assignment-statement into the application file.

Postponing Submission of the Declaration: Submission of the inventor‟s declaration may be postponed if an ADS is filed that identifies the entire inventive entity, including legal name, residence, and mailing address for each inventor. Under the old practice, if you filed an application without the signed oath, you would get a Notice to file Missing Parts and you would be required to file the signed declaration within a set period (usually two months, up to the statutory maximum). You will still get this if you do not file an ADS. Under the AIA, an applicant (i) may submit the inventor‟s declaration at the same time as filing the application, or (ii) may postpone the declaration which then must be filed at any time but no later than the date on which the issue fee is paid, provided that the applicant has filed an ADS identifying the inventive entity. Notice to File Missing Parts: If neither an ADS nor the inventor‟s signed declaration (for all inventors) is received on filing, the Office will send a Notice to File Missing Parts and require (1) either an ADS or the signed declaration(s), and (2) payment of a surcharge for the filing of the inventor‟s oath or declaration after the filing date of the application. If, upon filing the application, an applicant submits an ADS together with all required filing fees (including the surcharge for the later filing of the declarations), the PTO will not send a Notice to File Missing Parts requiring the declaration. If a declaration or substitute statement has not been received by the time the application is in condition for allowance, a Notice of Allowability will be sent setting a three-month non-extendable time period within which the applicant must file the inventor‟s oath or declaration. Declarations from prior applications: Under the old rules the declaration would carry over for a Continuation or a Divisional. That is still the case, but only if the old declaration has all the required language of a post-AIA declaration. If you used a pre-AIA declaration before, you must file a new post-AIA declaration if you are filing a Continuation application or if you are filing a Divisional application. For a CIP you


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always need a new declaration since a CIP contains new matter. For an RCE no new declaration is required since an RCE is not a new application and the old declaration carries over. Company as Applicant: A company to which the inventor has assigned the invention can file a patent application for an invention on behalf of the company rather than on behalf of the inventor. The company, not the inventor, can be the applicant. However, the inventor must still usually execute a declaration. The assignee company may only execute a substitute statement in lieu of a declaration where the inventor refuses to execute the declaration, cannot be found or reached after diligent effort, is deceased, or is legally incapacitated (e.g., insane, in a coma). Submitting a New ADS When Correcting Inventorship: As you have learned, submission of an ADS is not always mandatory but is always recommended as best practice, and it is mandatory when claiming priority, when the inventor‟s declaration is not filed with the initial application, or when there is an applicant who is not also an inventor. If you need to correct an inventor‟s name, add a new inventor, or add/change an applicant where the name was originally omitted, incorrect, or misspelled, you should submit a corrected ADS. See 37 CFR 1.46c and 3.71b. There is no longer a supplemental ADS, and information should be corrected or updated by filing a new ADS showing the changed or updated information by using standard editing, i.e., underlining for insertions and strikethrough (or double brackets) for deletions. File the corrected ADS and a written request (just a letter) explaining the corrections made. You can use a corrected ADS to (i) correct the name of the applicant where the name was originally incorrectly given; (ii) update the name of the applicant where the name of the applicant was either not supplied on filing or the name of the applicant has been updated (as with a company name change); or (iii) change the name of the applicant where there is a new applicant (e.g., application is sold). Inventorship corrections no longer require a statement regarding lack of deceptive intent. Power of Attorney: The power of attorney (POA) is covered later in the course, but we will mention it briefly at this point, because the AIA makes an important change in POA practice, and without a proper POA you may not be able to file certain documents. Filing a power of attorney is particularly important when taking over a case that was formerly with another firm or attorney. In this case a new POA must be filed to allow you to communicate with the PTO. The new POA will revoke the previous POAs and give your firm or attorney the right to prosecute the case. The POA will generally be signed by the assignee, such as an office of the applicant company. Prior to September 16, 2012, an assignee was required to establish ownership of the application to be able to grant a power of attorney to prosecute the application. The assignee was required to file form PTO/SB/96 (see later) showing they were the assignee of record of the entire interest (37 CFR 3.71). This is no longer the case for a new application filed on or after September 16, 2012, where the assignee files the application


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as the applicant. Under the AIA rules, when the assignee is the applicant, the assignee may appoint a power of attorney to prosecute the application without having to comply with §§ 3.71 and 3.73 and without having to file to file form PTO/SB/96.


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PTO/AIA/01 (May be used only if an ADS is filed. Use one form for each inventor.)


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PTO/AIA/08 - Page 1 of 2 (may be used with or without an ADS)


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Declaration - PTO/AIA/08 - Page 2 of 2


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Declaration - PTO/AIA/08 - Supplemental sheet for further inventors


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Substitute Statement – PTO/AIA/02 - Page 1 of 2


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Substitute Statement – PTO/AIA/02 - Page 2 of 2


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Ch.3/F: Information Disclosure Statement (IDS) An Information Disclosure Statement (IDS) is a list of references supplied to the USPTO by the applicant. The applicant is under a strict legal obligation to disclose any reference(s) that the applicant believes may be important for a determination of patentability. This obligation extends to everyone substantially involved with the application, including the inventors and the attorney, and is referred to as the duty of disclosure. If neither the applicant nor anyone substantially involved with the application knows about any relevant references, the applicant is not required to submit an IDS at all. But if relevant references are known about, an IDS should be always be submitted. An IDS is first submitted when you file a new nonprovisional patent application. No IDS is required for provisionals or for international applications. The applicant is required to supply copies of all cited foreign patent documents and non-patent references but does not need to submit copies of any US patents or published US applications. If the references are in a foreign language, the applicant should supply an English translation of that reference. Like the executed declaration and the fee, the IDS is frequently sent sometime after the application is filed (sometimes in response to a Notice to File Missing Parts). You may file an IDS electronically, even if the original application was not filed electronically. Of course, you may also file on paper. During patent prosecution new IDSs may be filed if new references become known to the applicants. These are sometimes referred to as Supplemental IDSs. Because it is a requirement, there is no limit to the number of IDSs that you can file. The most common references submitted with an IDS are patents (US and foreign), published patent applications (US and foreign), and scientific publications. But the references may be any type of published material, including information from trade shows, websites, or advertising material. The USPTO provides a standard form, PTO/SB/08a, for submission of an IDS. PTO/SB/08a is used to list all the US and foreign patent documents that the applicant is citing. PTO/SB/08b is used to cite all the non-patent literature, such as scientific publications. If you have more references than will fit on a form, you can use more forms of the same type. Helpful instructions are provided at the bottom of the forms. The far left-hand column is there for the examiner to initial to show that he/she has considered the reference. The next column is available in case the applicant wants to number the references. The third column is for the document number. The US adopted the standard WIPO codes to


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designate what kind of a document is presented. This is called the Kind Code and should be found after the patent/application number on the front page of the patent/application. The commonly used Kind Codes are listed below. Kind Code Kind of document A1 Patent Application Publication A2 Patent Application Publication (Republication) A9 Patent Application Publication (Corrected Publication) B1 Patent (No previously published pre grant publication) B2 Patent (Having a previously published pre-grant publication) C1, C2, C3 etc. Reexamination certificate E Reissue Patent H Statutory Invention Registration (SIR) P1 Plant Patent Application Publication P2 Plant Patent (No previously published pre-grant publication) P3 Plant Patent (Having a previously published pre-grant publication) P4 Plant Patent Application Publication (Republication) P9 Plant Patent Application Publication (Corrected Publication) S Design Patent


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Example: Information Disclosure Statement by Applicant, page 1 (PTO/SB/08)


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Example: Information Disclosure Statement, page 2 (PTO/SB/08)


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Example: Information Disclosure Statement, page 3 (PTO/SB/08) Certification Statement


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Example: IDS considered and initialed by the examiner and returned to applicant


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An IDS can be filed at a number of different stages during the prosecution process, and, depending on when it is filed, different documents and fees are required. The later the IDS is filed, the more expensive it becomes and the more documents are needed. The rules are as follows (shown in the table below): a) If the IDS is filed before the first Office Action or within three months of the application filing date, no fee, statement (see below), or petition is required. (37 CFR 1.97(b)). b) If the IDS is filed more than three months after the filing date and after the first Office Action has been mailed, but before the mailing of either a Final Office Action or a Notice of Allowance, either a fee or a statement is required. This fee is set forth in 37 CFR 1.17(p). c) If the IDS is filed after a Final Office Action or a Notice of Allowance, but on or before the payment of the issue fee, a fee and a statement are required. Table: Information Disclosure Statement Requirements

37 CFR 1.97(b) 37 CFR 1.97(c) 37 CFR 1.97 (d) If the IDS is filed…

Within 3 months of the filing date of the application; OR Before the mailing date of a first Office Action; OR Within three months of the date of entry of the national stage in a PCT application, whichever occurs last

After 3 months have elapsed from the filing of the application; AND after the first Office Action has been mailed, BUT BEFORE: 1. the mailing date of a Final Office Action; OR 2. the mailing date of a Notice of Allowance

After the mailing date of a Final Office Action; OR after the mailing date of a Notice of Allowance, but ON OR BEFORE the payment of the issue fee

Fees or special requirements

None A statement under 37 CFR 1.97 (e) OR A fee set forth in 37 CFR 1.17 (p)

A statement under 37 CFR 1.97 (e) AND A fee set forth in 37 CFR 1.17 (p)

The Statement (37 CFR 1.97(e)) referred to above can be made just by checking the appropriate box on PTO/SB/08, and states either (1) each reference in the IDS was cited in a communication received from a foreign patent office in a counterpart (related) foreign application not more than three months prior to the filing of the IDS; or (2) none of the references in the IDS was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, none of the references was known to anyone connected with the application more than three months prior to the filing of the IDS.


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Remember – if you cannot make either of these statements and no Final Office Action has been received, you can just pay the fee under CFR 1.17 (p). The USPTO provides this helpful table to their examiners to determine when a fee and/or statement needs to be supplied (see MPEP § 609.04(b) Examiner Checklist for Information Disclosure Statements). MPEP § 609.04(b) Examiner Checklist for Information Disclosure Statements

Quick Path Information Disclosure Statement (QPIDS) If an applicant wishes to have references considered after the payment of the issue fee, a petition to withdraw the application from issue will have to be filed, the application will have to be re-filed (probably as an RCE), and the reference will then be considered by the examiner de novo. The Quick Path Information Disclosure Statement (QPIDS) pilot program can be used in this case (check that it is available – call the USPTO if unsure). The QPIDS pilot program provides one form (PTO/SB/09) that contains all the statements and requests required to submit the new reference after payment of the issue fee, including a petition to withdraw the application from issue and file an RCE, all in one step. After looking at the new reference, if the examiner determines that there really is no new issue of patentability, the USPTO will issue a corrected Notice of Allowability.


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Note that the Statement under 37 CFR 1.97 (e) requires that every cited reference was not known about more than three months prior to the filing of the IDS. What happens if someone DID know about the reference but it was not filed, meaning that you cannot make the Statement under 37 CFR 1.97 (e)? Do not worry. If no Final Office Action has been received, you can just pay the fee under CFR 1.17 (p). If a Final


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Office Action has been received or the Notice of Allowance has been received, you merely have to file an RCE and submit the new IDS. To expand on this: if a reference needs to be submitted after the mailing date of a Final Office Action or after the mailing date of a Notice of Allowance, but on or before the payment of the issue fee (scenario in column 3), and if the applicant (or someone associated with the application) did know about the reference more than three months before the filing of the IDS, the statement cannot be made. The reference will then be placed in the file, but it will not be considered by the examiner. The only way to get such a reference considered will be to re-file the application, e.g., as an RCE. In this case, the RCE should go straight to the same examiner, who will consider the reference. If the reference, in the opinion of the examiner, poses no hurdle to patentability, the application will receive a first-action allowance, and all that will have been lost will be a few months of patent term. If the reference is left unconsidered, this may provide an obvious Achilles heel in litigation. NOTE: No one memorizes these rules. When you need these rules, you will look them up. You will find them at 37 CFR 1.97 and in the MPEP in section 609. And keep in mind that you can always call the USPTO toll free. An IDS should contain the following:

(1) A list of all patents, publications, or other information submitted for consideration by the patent office. (2) A legible copy of each reference cited, or the relevant portion of the reference (e.g., if it is a scientific paper or a book). (3) A concise explanation of the relevance of any foreign reference being cited (or an explanation may be set out in the specification of the application).

Each patent or published application cited in the IDS must be identified by inventor, serial number, issue/publication date, and country, if it is foreign. Each non-patent reference cited must be identified by author name (if any), title, and relevant page numbers of the publication, plus date and place of publication. Always list authors by last name first, as in Frost, Robert. A copy of any reference previously submitted to the PTO in a prior related (priority) application need not be submitted again, provided that the prior application is identified in the IDS. The IDS and all accompanying documents should be sent to the USPTO electronically via EFS-Web, via fax, or by first class mail using Certificate of Mailing.


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If the IDS is being filed via EFS-Web, log in as a registered user in the normal way, select the application for which the IDS is to be filed, attach the IDS documents and references, index them, then submit all documents and pay the fee on line. You can file any IDS forms using EFS-Web, but the USPTO recommends that you use the special EFS-Web e-IDS form PTO/SB/08A. This e-IDS form permits references to be automatically loaded into USPTO internal database systems. Using EFS-Web to submit an older version of the e-IDS form or a non-standard IDS form (like the type you would use to file by mail) will result in a validation error message that will tell you that the form is not a USPTO approved form. This is not a critical error, and the IDS will still be filed, but it will not work with the USPTO automatic data extraction system. EFS-Web Forms are available at: http://www.uspto.gov/patents/process/file/EFS-Web/guidance/Form_fillable_.pdfs_available.jsp. When using PTO/SB/08A all references should be contained within a single eIDS form whenever possible. An individual eIDS form may contain a combined total of (1) 50 US patents and US patent application publications, (2) 50 foreign patent documents, and (3) 50 non-patent literature documents. If more than one eIDS form is necessary, each additional eIDS should be filed as a separate follow-on submission in EFS-Web to enable automatic processing of the form. If filing the IDS by mail the following information should be placed on the first page of each reference to identify to which application it belongs: -serial number of the application, -filing date of the IDS, -first named inventor, and -docket number. The following documents should be sent with the IDS forms:

-transmittal letter (optional), -copies of non-US and non-patent references cited, and -any fees/statement which may be due.

The IDS and all references should be mailed to: COMMISSIONER FOR PATENTS, P.O. BOX 1450, ALEXANDRIA, VA 22313. If the IDS is being sent in response to the Notice to File Missing Parts, it should be addressed to Mail Stop Missing Parts. If filed After Final, it should be addressed to Mail Stop AF. IDSs in RCEs, Continuations, and Divisionals Often, you will be filing an application that is the child of a parent application for which an IDS has already been filed. The examiner needs to know what documents the applicant considers relevant, but it would be wasteful to duplicate work that has already been done in the original IDS. See MPEP 609.02.

http://www.uspto.gov/patents/process/file/EFS-Web/guidance/Form_fillable_.pdfs_available.jsp

http://www.uspto.gov/patents/process/file/EFS-Web/guidance/Form_fillable_.pdfs_available.jsp


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The examiner will automatically consider information that has previously been submitted in the IDS of a US parent application when examining a Continuation application, a Divisional application, a Continuation-in-Part application, or an RCE. An IDS need not be resubmitted in these cases unless you have become aware of new prior art, in which case an IDS should be submitted with only those references. No specific request from the applicant that the previously submitted IDS be considered by the examiner is required. If the application is a US National Phase (371) application that claims priority from a PCT application, the applicant will generally have received an international search report citing references the PCT believes are relevant to examination. Of course, you will want the examiner to consider these references, so when you file a 371 National Phase application, you should make sure that you also submit a copy of the International Search Report (ISR) and copies of all cited references. If these are not in English, you must also submit translations of the references. The US examiner will then consider the documents cited in the ISR without any further action by the applicant, that is, without submitting the references in an IDS (See MPEP 609). If you do not submit the ISR and references at the time of filing, you will then have to file an IDS later to make sure the references are considered. The US examiner will consider the documents cited in the international search report, without any further action by the applicant under 37 CFR 1.97, that is, without submitting the references in an IDS See MPEP 609). The USPTO strongly discourages applicants from submitting old copies of IDS forms (e.g., PTO-SB08 or PTO-892 forms) from other applications. This is because a completed PTO/SB/08 form from a previous application will already have initials of an examiner and the application number of another application, which will cause confusion at the patent office. Note: Check that the references submitted have been considered by the examiner. If you file an IDS, you expect that the examiner will consider all the references you send. But that is not always true. And if a reference has not been considered in the previous case, it will not automatically be considered in the Continuation, Divisional, or Continuation-in-Part application. RCEs are different--the IDS already has been considered in an RCE, because an RCE is the continuation of the same case. When the examiner receives the IDS he/she will return a copy to the applicant with the references marked as having been considered by initialing the references. Usually all the references will have been considered. But check carefully. In order to ensure consideration of information previously submitted but not considered in a parent application, the applicant must resubmit the information in a new IDS in the new application. Copies of the patents, publications, pending US applications, or other documents already properly submitted in the parent application do not have to be resubmitted in the new application.


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Ch.3/G: Power of Attorney The power of attorney (POA) is a legal document by which the applicant gives one or more patent attorneys or patent agents the authority to act for him/her in matters related to the patent application. The person who signs the power of attorney must have ownership rights over the application. This may be the inventor(s) or the assignee of the entire right in the application. Where an assignee is named as the applicant in the patent application (i.e., in a signed Application Data Sheet), the assignee-applicant can give power of attorney using the PTO/AIA/82 form. Power of attorney can be given to one or more registered practitioners, either by individual name(s) or to all practitioners who are associated with a specific customer number. Prior to September 16, 2012, an assignee was required to establish ownership of the application to be able to grant a power of attorney to prosecute the application using form PTO/SB/96. For a new application filed on or after September 16, 2012, the assignee may file the application as the applicant without proof of ownership. The new standard power or attorney form (PTO/AIA/82) includes a check-box to state that the applicant is the assignee. You just have to check the box. No evidence is required. The USPTO provides various alternative forms to request power of attorney including PTO/AIA/80, PTO/AIA/81 and PTOAIA/82. Have a look at the title to make sure the form does what you need. You may want to check with your attorney if you are not sure. The old pre-AIA form PTO/SB/80 is still available for applications filed before September 16, 2012. This includes 371 applications with an international application filing date before September 16, 2012. You MUST use the pre-AIA (SB) power of attorney forms for these older applications. PTO/AIA/80 is for use by an assignee who is either (i) already the applicant of record (e.g., in a filed ADS) or (ii) wants to become the applicant. PTO/AIA/81 is used by pro se inventors who are the applicant for patent to give one or more of the joint inventors a power of attorney for the application. PTO/AIA/82 is the one you will use most often. It is used by the applicant (can be the inventor, legal representative, assignee, person with proprietary interest – whoever was listed as applicant on the ADS) to give power of attorney to one or more registered practitioners. PTO/AIA/82 comes in two parts: PTO/AIA/82B for the applicant to sign, and PTO/AIA/82A, which is the transmittal for the attorney to sign. PTO/SB/80 is the power of attorney to use if your application has a filing date before September 16, 2012.


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The POA may be filed together with the application but is often sent sometime after the application is filed, once the application number is known. You will probably be using the USPTO forms, but many law firms have their own power of attorney form which is combined with the oath/declaration and may be referred to as a combined declaration-power of attorney. The power of attorney (POA) may carry over from one application to the next, but only if the new and old applications have the same information in the specification and do not reveal anything new (i.e., a Continuation, Divisional RCE, etc.). The reason for this is that a POA covers only the subject matter in the specification being filed. If you file a second application that contains the same subject matter as a previous application, the old POA covers the new application. But if the new application contains new subject matter (e.g., a Continuation-in-Part application), a new POA is required. The USPTO offers a combined form, the Power of Attorney or Revocation of Power of Attorney with New Power of Attorney and Change of Correspondence Address (PTO/SB/81), which is used to submit a new power of attorney and/or cancel power of attorney, along with a change in correspondence address.


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Example: Power of Attorney (PTO/AIA/82A)


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Example: Power of Attorney (PTO/AIA/82B)


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Example: Power of Attorney (PTO/AIA/80) to sign by assignee of record


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Example: Power of Attorney and Change of Correspondence Address (PTO/SB/81)


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Example: PTO/SB/96 - statement that the assignee is owner of the entire right

http://www.uspto.gov/web/forms/sb0096.pdf


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Example: PTO/SB/96 - statement that the assignee is owner of the entire right - Page 2

http://www.uspto.gov/web/forms/sb0096.pdf


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Ch.3/H: The Assignment- Recordation, Searching and Correcting An assignment is usually recorded after the application is filed and, indeed, can be filed any time during prosecution. But for the sake of convenience, we will discuss it here, with the other parts of the application. An Assignment is a legal document whereby the inventor(s) transfers (assigns) rights to the invention to another person or company, generally to the company for which they work. A standard form is usually used, and the inventor generally assigns to the company all rights to the patent application, to any patent that should issue, and to any related future applications and patents. When a patent is issued, the assignee's name appears on the front of the issued patent. The assignment is a contract between the inventor (assignor) and the company (assignee) and is not a USPTO document. However, recordation (below) is a USPTO function that involves official USPTO forms. An assignment document must clearly identify the patent or patent application for which rights are being assigned, including the serial number of the patent or application(s). If the assignment is being made with the filing of a new application (i.e., before you have received an application number), the application should be identified by the title of the application, the names of the inventors, and the docket number so that there can be no confusion as to which application is being referred to. The assignment should also include a statement of the rights being assigned, and the parties to and from whom the rights are being assigned. The assignment then needs to be signed and dated by all the inventors. The purpose of recording an assignment at the USPTO is to enter the assignment into a public database to allow the world to know who owns what rights to the invention. An assignment does not have to be recorded at the patent office to be valid. An assignment is just a contract and is valid as soon as it is signed by the parties. The purpose of recordation is to provide legal notice to anyone who might be interested. This is called Constructive Notice. Nobody can later say, “I did not know about this assignment.” Once it is recorded, it is the duty of the interested party to make sure he knows about it. In legal terms, an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the USPTO within three months from its date or prior to the date of such subsequent purchase or mortgage (35 USC 261). Recording an assignment with the USPTO is free if done online but if filed on paper carries a fee ($40 at the time of this writing). (i) Assignments containing Inventor’s Declaration: Under the America Invents Act, an assignment that contains an oath/declaration clause, with all the required language (see section on declarations) may be used in lieu of a separate declaration. In such case, the applicant may file and record the combined assignment/declaration document in the Office. Such an assignment will routinely be found in employment contracts for


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technology companies. Practice tip: review your employment contracts and update them to include the required language for assignment and/or declaration. For the assignment to be used as a declaration it must have the correct declaration language and it must be recorded. Recordation is preferably done using the Electronic Patent Application System (EPAS). When recording an assignment that includes a declaration, remember to check the box in EPAS to notify the PTO that the assignment is being used as the inventor‟s oath or declaration. This will alert the PTO to place a copy of the assignment-statement into the application file (see below). Counter-signatures: Some practitioners get the assignment accepted and counter-signed by the assignee, as it can be important in foreign jurisdictions. Below is an example of an assignment document. This is not a standard document and your attorneys will have their own; however, the below document will give you an idea of what may be included in an assignment. Also, sometimes you will see some assignment documents with notary blocks at the bottom. The USPTO does not require that assignments be notarized, and it is up to the attorney or firm to decide if they want the documents notarized.


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Example of an assignment document

(ii) Recording Assignments: Assignments are usually recorded in the patent office. This means that the USPTO makes a record of the assignment in the official USPTO patent


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file, which becomes public once the patent is issued. An assignment does not have to be recorded to be valid, but for legal reasons, it is always best to record the assignment. Recording the assignment can be done at any stage of prosecution, and from January 1, 2014, there is no fee if you file the assignment electronically (the fee was $40 if filed before this date). There is still a fee if you file by mail. The USPTO will record many different kinds of documents, including licenses, name changes, mortgages, security agreements, liens, mergers, option agreements, and other contracts, which are sometimes recorded with the USPTO so as to provide an official, public record. The USPTO will not, however, record documents associated with foreign applications. Any assignment recorded by the USPTO must have a US patent number, US patent application number, or PCT application number associated with it. The patent or application is the property that is the subject of the document. Recording an assignment is very easy and is done using via the Electronic Patent Assignment System (EPAS) (http://epas.uspto.gov/). If recording an assignment online you should use the USPTO Electronic Patent Assignment System (ePAS). There is no fee for recording an assignment online. Using ePAS, you create and submit a Patent Assignment Recordation Coversheet by completing online web forms and attaching the supporting legal documentation as .tiff or .pdf for submission via the Internet. Supporting documentation attached to the Patent Assignment Recordation Coversheet must be in .tiff image format, letter size (8.5"x11"), 300 dpi, portrait orientation, and black-and-white. Upon completion of the assignment recordation process, a Confirmation of Receipt will be displayed, and the time stamp will be applied to the submission. The time stamp applied by the ePAS server is the time of official USPTO receipt. Note that this will be Eastern time. Payments may be made using a credit card, electronic fund transfer (EFT) or through an existing USPTO deposit account. You will receive an immediate email receipt confirmation and you should receive a fax assignment recordation notice within about 24 hours. To file an assignment using EPAS, follow these steps: 1. Go to http://epas.uspto.gov/.

http://epas.uspto.gov/

http://epas.uspto.gov/


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2. Click on the link at the bottom- Please click here to access EPAS forms. Review the Guidelines and click on Start or Start from template (if you have a template saved). 3. Under Conveyance Type select Assignment and go on to the next screen. Or if you are correcting a previously recorded assignment, you need to click on Corrective Assignment.

4. The next screen is for Correspondence Information. Enter the information for the attorney and law firm or corporation.


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5. The next screen is for the Conveying Party(ies). Enter the information for the inventor (assignor) assigning its interest in the invention. The date of execution is the date on which the assignment was signed. If you have more than one inventor assigning rights to an invention (and you usually do), click on Add. If you have only one assignor, click on Add and go to the next screen. If the conveying party is a company, select Company and provide the company name.

6. If you clicked on Add because you have more than one assignor, you will see another Conveying Party(ies) screen with the details of the first assignor below. Once you have entered information for all assignors, click on Add and go to the next screen.


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7. You will be taken to the Receiving party(ies) screen. The Receiving Party (the assignee) is usually a company. Enter the required information and go on to the next screen. Sometimes the assignee is an individual, in which case, enter the required information and go on to the next screen.

8. On the next screen you need to enter the Property(ies) for which rights are being conveyed. There is a box for US application numbers, US patent numbers, and PCT application numbers. Add these as appropriate. Remember that the USPTO will not record any foreign properties, just US and PCT. You can add as many properties as you like in successive screens. If you are conveying only one property, click on Add and go to the next screen. If you are conveying more than one property, click on Add.


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9. If you clicked Add because you are conveying more than one property, you will be taken to another Property(ies) screen with the details of the first property below. Once you have entered information for all properties, click on Add and go to the next screen.


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10. The next screen allows you to upload an image of the assignment document(s). Find and attach the documents, which must be in .tiff or .pdf. If you have more than one assignment document, you need to combine them into a single document for uploading.

11. Once your assignment documents have been uploaded, click Attach File. Your documents will be attached and displayed as thumbnails on the next screen. If everything appears correct, click on Next Screen. If not, click on Back to correct errors. Do not use your browser‟s BACK button.


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12. The next screen is the Signature screen, where you confirm all the information about the assignee(s) and assignor(s) and electronically sign the assignment recordation request. The signature is the usual type of electronic signature (covered elsewhere), typically a name preceded and followed by a forward slash, e.g., /Jo Jones/.


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...screen shot continued...

...screen shot continued...


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When recording an assignment that includes a declaration, remember to check the box in EPAS under the signature block (above) to notify the PTO that the assignment is being used as the inventor‟s oath or declaration. This will cause the PTO to place a copy of the assignment-statement into the application file. 13. Last is the Validate screen. Check all the assignment information one last time and validate the filing. There is no longer a fee if you file the assignment electronically. There is still a fee if you file by mail. You‟re done. Your assignment has been filed. 14. After filing you will receive an email from EPAS Server telling you that your assignment has been received. The subject line will be “Assignment confirmation receipt ID:PAT136365XXXX.” The email will say something like this:


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As the email tells you, after review by Assignment Services a Notice of Recordation (or of Non-Recordation if something is wrong) will be sent to you via fax at the fax number you provided. The Notice of Recordation will include all the details of the assignment as well as the reel and frame number on the microfilm spool which serves as the permanent patent office record. Now you have to wait for another email with the Recordation of Assignment document attached to it, which should take no more than 48 hours. If it takes longer, call the USPTO Assignment Services Division. If you are submitting the assignment/recordation documents with a newly filed paper patent application, you should send the assignment documents in the same envelope with the patent application (we will discuss finalizing and mailing the application later). If you are submitting the assignment/recordation documents sometime after the original filing date, you can submit them electronically, send them by mail, or fax them. Submitting them electronically is by far the fastest and cheapest (free!) method. Submitting by mail or fax incurs a fee. A note about filing assignments by fax. You will probably never have to file an assignment by fax, but if you do you can fax the assignment documents directly into the


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automated Patent and Trademark Assignment System: (571) 273-0140. This number is a dedicated number for assignment recordation and is not the same as the centralized USPTO fax number (571) 273-8300. Fax numbers have changed in the past, so it is always worth checking the number before faxing. Faxing to the automated Patent and Trademark Assignment System provides an automatic fax receipt. After a few days or weeks a recordation notice will be faxed back to you. Assignment documents submitted through EPAS also permits the recordation notice to be faxed to customers. Credit card payments for payment of fees to record assignment documents can also be faxed; the use of the Credit Card form (PTO-2038) is required. The easiest method to pay fees is to use your USPTO deposit account through the Financial Manager. When the Assignment is received by the USPTO, it will be recorded in their microfilm filing system and stamped with reel and frame numbers that indicate its location in the system. The original assignment will then be returned to the applicant for safekeeping. Errors in the assignment may be corrected by sending in a new assignment for recording, pointing out the errors, and supplying the correct information. The new assignment supersedes the old one. Later in this course you will learn why a new Assignment is not needed for Continuation or Divisional applications but is required for Continuation-in-Part applications.


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Example: Recordation Form Cover Sheet – patents only


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(iii) Searching for Assignment Records: Searching assignment records is a common task. Because you can search only assignments for applications or patents that have been published, you will not be able to find assignments for any application prior to its 18-month publication date. Assignments may be searched for using various application data. Normally you will be using the patent number or the application publication number. First, log in to PAIR and find the link on the left hand side of the webpage that says *Patent Ownership. Expand the selection and click on Search Patent Assignments.

You will see the following screen:

Enter the appropriate data (usually the patent number of the application publication number) and click Search. Note that when using the publication number you have to leave off the country code (at the beginning) and the Kind code (at the end). For example, for US20120282283A1, you would enter 20120282283. You will then be able to see the record of the assignment, including the type of conveyance, the reel and frame number, the assignor, and the assignee. You will not be shown the actual assignment document, which is recorded on microfilm at the indicated reel/frame location.


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Note that searches may be conducted using only one search element field at a time. You cannot narrow your search by using, for instance, assignee name and assignor name. Also, note that if entering a name, do not enter commas or other punctuation marks; otherwise you will restrict the results to the exact name typed, with those punctuation marks. A record found using the Assignments search system will look like this:

(iv) Correcting Assignments An error in a recorded assignment document can be corrected by filing a corrective document with the Assignment Division (See MPEP 323). The corrective document must include the following: (A) A copy of the original assignment document with the corrections made therein. The corrections must be initialed and dated by the party conveying the interest (i.e., the inventor). Corrections in a merger or change of name may be made on the original assignment document by lining out an incorrect patent or application number (see MPEP § 314). (B) A new Recordation Form Cover Sheet form PTO-1595. You need to identify the new recordation cover sheet as a corrective document. Type these words clearly on the cover sheet, and also type in the reel and frame number where the incorrectly recorded assignment document is recorded. The original cover sheet should be submitted with the corrective document. The corrective document will be recorded and given a new reel and frame number and recording date. The recording fee set forth in 37 CFR 1.21(h) is required for each patent application and patent against which the corrective document is being recorded. See MPEP § 302.06. It should be noted that no fee is required is you are filing electronically.


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Filing the corrective assignment using EFS-Web

1. Log into EFS-Web.

2. On the left hand side, find and select Patent Ownership / Change Ownership

3. The next page will be called Electronic Patent Assignment System (EPAS). On the bottom of this page, click „Start‟ to access the EPAS system.

If you have previously saved an assignment on the EPAS system, you will have received an email from EPAS with a link to the saved assignment. Follow the link in the email.

The link will take you to a page where you can start resubmission.


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If you have attempted to record an assignment which has not been recorded due to errors, you will get an email from PTAS telling you that the assignment has not been recorded, and including an attached letter explaining why, and what to do to correct it.


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4. Once you have logged in to EPAS, click on Start.

5. On the page called Conveyance Type select Corrective assignment and fill in the

fields. Then click on Next screen. If you were filing a normal assignment, you would select the Assignment button.


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6. On the screen called Correspondence Information fill in the required fields for

your law firm/company then go to the next screen. Remember that the receipt email will be sent to the email address you enter here.

7. The next screen is for the Conveying Party(ies) information. The conveying

parties will usually be individuals. Fill in the names and date of execution and click Add. When you Add the information, it appears in a box below the fields. When all the parties have been added, click Add and go to next screen.

8. The next screen is for the Receiving party(ies) information. This is usually the

company or university for which the inventors work. Fill in the information required and click Add. When you Add the information, it appears in a box below the fields. When all the receiving parties have been added, click Add and go to next screen.

9. The next screen is where you enter the application/patent number being assigned.

Enter one or more numbers and click on Add and go to the next submission.

10. On the next screen, upload your scanned assignment(s) then and click on Attach file.

11. You will then see an image of the atached file, below. You can attach another

image or go on to the next screen.

12. The next screen is the Signature page. Check all the data is correct and e-sign the

document.

13. Lastly, sign the document, check all the assignment information one last time, and validate the filing. There is no longer a fee if you file the corrective assignment electronically. After filing, you will receive an email from EPAS Server telling you that your assignment has been received. The subject line will be Assignment confirmation receipt ID:PAT1363653735.


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When the assignment is recorded, you will receive an email from PTAS ([email protected]) titled, Assignment Notice of Recordation with the assignment recordation notice attached.


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Ch.3/I: Fees The current fee list may be found on the USPTO website at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule . You will be able to calculate the fees owed when submitting your application, and fees may be paid through the Financial Manager at the end of your transaction As discussed previously, an application may be entitled to have certain fees reduced by 50% or 75% if it qualifies as a Small Entity or as a Micro Entity respectively. This includes application fees for US and international applications, potentially saving thousands of dollars over the pendency of an application. Detailed information on Small Entity and Micro Entity fees is in Ch.3/B. Ch.3/J: Application Format These formatting rules apply whether you are filing electronically or on paper. The application should be printed on only one side of each sheet of paper, in portrait orientation, not landscape, and on either 8 ½ x 11 (standard US letter size) or A4 (standard European letter size). A4 format should always be used when submitting PCT documents via EFS-Web. Line spacing must be 1½ or double-spaced. Text must be written in a simple, clear type font (Arial, Times Roman, or Courier are best). The minimum height of capital letters in the text of the application must be 0.28 cm. This corresponds to a Times New Roman font size of 12. All text must appear only in a single column; do not use two or more columns of text per page. The specification must have at least the following margins: Top and bottom = 2cm (3/4 inch). Right = 2cm (3/4 inch). Left = 2.5cm (1 inch). Page numbers should appear at the top center or bottom center of each page. The claims should start on a separate sheet. The abstract should be on its own, separate sheet. Each paragraph should be numbered consecutively in bold, in brackets, using at least a 4-digit number, e.g., [0045]. The paragraph numbers should appear as the first item in each paragraph, before the first word of the paragraph, and should be highlighted in bold. A gap, equivalent to approximately four spaces, should follow the number. Paragraph or section headers (titles) are not considered paragraphs and should not be numbered. Non- text elements (e.g., tables, mathematical or chemical formulae, chemical structures, and sequence data) are considered part of the numbered paragraph around or above the elements and should not be independently numbered.

https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule


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Ch.3/K: Drawing Format The basic rules for drawings are that they must communicate the invention to the examiner and be suitable for scanning. There used to be many complex and specific rules for drawings dealing with font size, types of lines, etc. (MPEP 608.02), but the new, more general rule supersedes the old rules. Now a drawing is basically acceptable if it is clear and complete and can easily be scanned. The patent office scans in drawings for use in the published application and in the final, printed patent. You may hear drawings referred to as informal drawings. This is the old term used to describe drawings that do not comply with all the patent office rules. Drawings that do comply with the patent office rules are referred to as formal drawings. The new rules do not make this distinction. All nonprovisional patent applications, together with their drawings, are published at 18 months from priority. The Office of Patent Application Processing (OPAP), formerly Office of Initial Patent Examination (OIPE), will perform an initial review of drawings to see if they are acceptable for scanning and publication. The standard of review employed by OPAP is such that most drawings should be considered acceptable. If OPAP requires corrected drawings, it will send the applicant a Request for Corrected Application Papers. The applicant will generally be given two months to supply the corrected drawings. The corrected drawings filed in reply to the OPAP Request will be included in any patent application publication. If an applicant desires to have better drawings included in a patent application publication than the drawings which were submitted with the application on filing, the applicant may submit replacement drawings 14 months from the earliest filing (priority) date. Along with the replacement drawings, a petition under 37 CFR 1.182 must be submitted requesting entry of the drawings, and the petition fee set forth in 37 CFR 1.17(h) must be paid in the time period set forth above. If such drawings are properly and timely submitted, the patent application publication will include the replacement drawings. Replacement drawings that are received later than this date may be included in the patent application publication, where practicable, if the USPTO has not started the publication process. An applicant may also provide an entire substitute copy of the application (including better replacement drawings) for publication via EFS-Web. Drawings are generally submitted as black ink line drawings on white background. Color drawings are discussed below. Some important requirements for scannable drawings are that the margins should be sufficient, the paper of an appropriate size, and the drawing pages clean. Moreover, the


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drawing pages should be appropriately labeled. If you follow the rules here, the drawings should always be acceptable: - The drawings must be formatted on either 8 ½ x 11 or A4 paper. - They must be clean and reasonably free of any extraneous marks. - The drawings must have at least the following margins:

Top = 2.5 cm (1 inch) Bottom = 1 cm (3/8 inch) Right = 1 ½ cm (5/8 inch) Left = 2.5 cm (1 inch)

- Each sheet of drawings must be numbered. The drawing pages are numbered separately from the rest of the application. The page numbers do not carry on from the end of the specification. The convention is to use two numbers separated by a diagonal line - the first number is the number of the page, the second is the total number of pages of drawings: 1/12 (page one of twelve) or 7/10 (page seven of ten). These numbers must be placed top and center of the page, and they must be below the top margin, not inside it.


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Example: Sheet of drawings


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An easy way to check your margins is to use a template. On letter sized paper or a transparency sheet, draw in the margins with a dark marker. Just lay it over the drawing page to determine immediately if the margins are sufficient. Sizing a drawing and removing marks can be done easily by using white tape or correcting fluid and a photocopier with a resizing feature. But be careful when reducing a drawing; you do not want to make the reference numerals unreadable or too small. Each page of drawings may optionally have identifying information printed on the front of each sheet, centered within the top 1-inch margin. The identifying information should include

- title of the invention, - inventor's name, and - docket number (and application number if you already have one).

It is a good idea to include the name and telephone number of someone that the USPTO can contact if the drawings become separated from the rest of the application (usually the patent attorney). Each drawing should be numbered using consecutive Arabic numerals preceded by the abbreviation FIG. For example, FIG.1 and FIG.2. All lines used for the drawing must be even and uniformly black. Some drawing programs such as the one that comes with Microsoft Word will produce uneven edges if you are drawing a thick line. The patent office may not accept drawings with such lines. Alternate positions of an object, such as a second position into which a lever may be moved, should be indicated by using broken lines to draw the object. Shading is encouraged if it aids in understanding the invention, such as to indicate a spherical or cylindrical surface. Legends may be added to the drawings and should be descriptive and contain as few words as reasonably possible. Reference numbers and letters (numbers are preferred) should be clear and measure at least 0.32 cm (1/8th inch). Letters should employ the English alphabet unless another alphabet is customarily used, such as the Greek alphabet for mathematical symbols. Handwritten letters and numbers are acceptable, so long as they conform to the usual requirements of size and clarity. Lead lines are the lines that lead from a reference number to a numbered object. They may be straight or curved, and should be as short as reasonably possible. Lead lines must not cross each other. Arrowheads may be placed at the end of the lead lines. The arrow should touch the object indicated. A freestanding arrow, not touching any particular


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object (see reference number 10 in the examples) may be used to indicate an entire object or section. A copyright notice may be placed on a drawing. It must be placed immediately below the copyrighted figure. The letters of the copyright notice must measure at least 0.32 cm (1/8th inch). Color Drawings. The USPTO discourages color drawings, but they will be accepted if they are the only practical medium by which to disclose the subject matter sought to be patented in a utility or design application. The color drawings must be reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13). The Office will accept color drawings in utility or design patent applications only after granting a petition that has been filed explaining why the color drawings are necessary. Any such petition must include the following: (i) The fee set forth in § 1.17(h); (ii) Three (3) sets of color drawings; and (iii) An amendment to the specification to insert the following language as the first paragraph of the brief description of the drawings:

The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

Color drawings may be filed through EFS-Web for all nonprovisional utility applications and US national stage applications under 35 USC 371. See MPEP 502.05. Ch.3/L: Finalizing and Filing the Nonprovisional Application You are now ready to finalize the application and file it. To begin, organize and check all your documents. Here is a checklist. Checklist:

- Application data sheet - Transmittal sheet PTO/SB/05 (optional) - Specification - Drawings (if any) - Fee Calculation Sheet PTO/SB/17 (optional) with deposit account authorization

You may also have - Declaration (executed or unexecuted),

- A Power of Attorney, - Certification of Micro Entity status, - Assignment and Recordation of Assignment Cover Sheet, - An Information Disclosure Statement (if necessary),


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- Sequence listing, and/or - Computer code listing.

A Sequence Listing (showing a polynucleotide or protein code) must be submitted as a .txt file using EFS-Web. If filing by mail it may be submitted on paper, with an accompanying CD and a Sequence Listing Statement stating that "the sequence listing information recorded in computer readable form is identical to the written (on paper or CD) sequence listing." This statement is not required if using EFS-Web. A Computer Program Appendix Listing may be submitted by EFS-Web or on compact disc by mail (37 CFR 1.96). If the computer program listing is less than 300 lines long, with each line 72 characters or fewer, it may be submitted either as a drawing or as part of the specification. But any computer listing having more than 60 lines of code and submitted as part of the specification must be positioned at the end of the description, but before the claims. It is useful to use an itemized checklist, as above, so that you can easily ensure that all parts are present and accounted for each time you file an application. Double check everything – particularly the ADS information – and make sure all the parts of the application are present. Ch.3/M: Filing the Nonprovisional Application using EFS-Web File your application electronically using EFS-Web. Prepare the application as explained above, and follow the steps below. We recommend you follow the steps along on your computer so you can get a feel for how to navigate the website. The more often you do it, the comfortable you will be when you‟re in a time crunch. We will let you know when you need to exit so that nothing is actually filed. For the full walkthrough with images, see Chapter 12/C. Log in to the EFS-Web system on USPTO.gov. After choosing the practitioner for whom you are working, you will be sent to the Certification screen. Under Main Functions you can select New Application/proceeding. Now select the type of application you want to file, such as utility, design or International (PCT) applications. In this case, you are filing a US nonprovisional utility application. Selecting Utility lets you then choose from Track I Prioritized Examination, Accelerated Exam, Nonprovisional, Provisional, Reexam, Reissue, and US National Stage (of a PCT application) under 35 USC 371. In this example, we will select Nonprovisional Application under 35 USC 111(a). Selecting Nonprovisional Application under 111(a) takes you to the EFS Registered Application Data screen where you enter the basic application information including title, docket number, inventor name and related customer number. At the top are radio buttons to select how you are going to submit the ADS - either by attaching a PDF, or by


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having the ADS auto-generated based on the date you enter. Which one you select will depend of the usual firm/company policy. Enter the information and click on Continue to show a summary of the data entered. Click Choose File to attach documents, and select the appropriate Category and Document Description. Keep adding files until all your files have been selected. Note that if you need to add a TXT file, e.g. a sequence listing, you cannot do it at this stage. You have to wait until you have uploaded and validated your PDF/DOCX files, and only then can you separately add your TXT files. Note also that DOCX format is allowed when filing applications, but is not accepted when filing follow-on documents, where PDF must be used. The documents to be submitted must be in the correct format and must be named using the proper naming convention. If they are not, an error message will be displayed and the document must be removed and replaced by one of the correct type. All documents must be in PDF or TXT format. If using PCT-SAFE, then .zip compressed files may be used. In almost all cases, PDF documents are used. File names cannot include spaces. Examples of valid file names include the following: Patent_file_001.pdf client12345.pdf lettersorNUMBERS.txt 123_abcde_z.zip Then click Upload and Validate The files will be uploaded and progress will be shown. On the following Validation screen, you will see the status for each attached file. You should review any Warning or Error, and amend or remove the document as required. You do not necessarily have to delete a file with a Warning, for example, if the document is not an official USPTO supplied form, you can still file it, but you should check to make sure there is no serious problem. You cannot file with a red triangle Error, and you will have to remove/fix/replace the file as needed. When all the files pass validation (no red triangles), continue to the Fee Calculator page. Make sure you select the right fee status: Regular Undiscounted, Small Entity or Micro Entity. Then select the fees required. For a new nonprovisional application, you will usually select at least Filing, Search and Exam fees. You may have others. The system will calculate the total for you.


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On the next page, you will have a last chance to review all the application information before you file it. Review it very carefully. Click on document links if you want to review an attached document. Alternatively, at this stage, you can cancel, or save the documents for submission later. If actually filing, then SUBMIT the application. Click only once. All you have to do now is pay the fees. Alternatively, at this stage, you can cancel, or save the documents for submission later. Once filed, you will be automatically taken to the USPTO Financial Manager system to pay the fees using stored payment methods such as a USPTO Deposit Account, a Credit Card or Electronic Funds Transfer. Review the payment order details and the total fee due for filing the application. Select the payment method (usually deposit account) and any safety net Fee Preauthorization(s) desired, and SUBMIT PAYMENT. As soon as payment has been made, a screen will appear telling you that the submission has been successfully filed and the fees have been paid. A link to an Electronic Acknowledgement Receipt will be provided. This will show all the application data including the new application number and confirmation number that you will need to access the file. It will also show the date and time of filing. You can view, save, print, or email this receipt. You will not receive a confirmation via email that the USPTO has received your submission. Within an hour (usually sooner) you can access the filing in Private PAIR to view your submission.


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Electronic Acknowledgement Receipt - NONPROVISIONAL (first page)


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Electronic Acknowledgement Receipt - NONPROVISIONAL (last page)

You will also receive an Official Filing Receipt some weeks later. It will be available through Private PAIR, and you will receive a notification of its availability by email from [email protected], which will have a subject line something like, “Private PAIR Correspondence Notification for Customer Number 54321”. You will also receive a paper copy of the filing receipt (and all subsequent USPTO correspondence) by mail, unless you have specifically requested that paper documents should not be mailed. If filing the nonprovisional application by mail, be sure that you include a return receipt postcard and the Priority Mail Express certificate. Put the entire application into the Priority Mail Express envelope, and address the nonprovisional application to: COMMISSIONER FOR PATENTS, P.O. BOX 1450, ALEXANDRIA, VA 22313-1450. Mailing procedures are discussed in detail in Chapter 1. Do not ignore the mailing rules. If you practice for long enough, it is highly likely you will have to file by mail one day. Ch.3/N: Speeding up examination Examination can often take between three and five years. There are a number of efficient ways to speed up examination. These require filing petitions and/or fees, and include the following: Accelerated Examination, Petition to Make Special, Patent Prosecution Highway (PPH) and Track One Prioritized Examination. See Chapter 13 for a detailed discussion of each of these.


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Ch.3/O: Docketing after Filing a New Nonprovisional Application - 3 months from filing: Check that the paper/PAIR Filing Receipt has been received. If not, contact the USPTO. - 12 months from the priority (earliest application) date: Possible PCT filing. - 18 months from the priority date: Check for publication. - 30 and 31 months from priority date: national/regional filings. Ch.3/P: Preliminary Amendment When filing a new application you may, at the same time, file a Preliminary Amendment (MPEP 714.09; 37 CFR §1.121). This is an amendment to the claims and/or specification made any time before the first Office Action. The Preliminary Amendment must be submitted either before the first Office Action is mailed or within three months of filing. A Preliminary Amendment is often submitted with a Continuation, Divisional, or RCE application at the time of filing. Preliminary Amendments are discussed in more detail later in the course. Ch.3/Q: First Action Interview pilot program When filing a new application you can file a request to use the First Action Interview pilot program. Under this program, an applicant is entitled to a first action interview prior to the first Office Action on the merits. The examiner will conduct a prior art search and provide the applicant with a pre-interview communication citing relevant prior art and identifying proposed rejections or objections. Within 30 days of receipt, the applicant schedules an interview and submits proposed amendments and/or arguments. At the interview the relevant prior art, proposed rejections, amendments, and arguments will be discussed. If agreement is not reached, the applicant will receive a first action interview Office Action that includes an interview summary that constitutes a first Office Action on the merits. You can file a request to use the First Action Interview pilot program either upon filing, or any time at least one day before a first Office Action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system. To request participation in the a request to use the First Action Interview pilot program, fill out and file PTO/SB/413c. There is no fee.


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