CHAPTER 5 PATENT PROSECUTION · of filing in the form of the downloadable e-acknowledgement, this is not the same thing as the official filing receipt, which you get after everything

© 2001 through 2019 IPLEGALED, Inc. All Rights Reserved

187

CHAPTER 5 PATENT PROSECUTION Patent Prosecution is the process of formal legal negotiation between the USPTO examiner and the patent attorney or agent. The attorney fights to get the broadest possible patent coverage, and the USPTO examiner attempts to limit the scope of the invention to what he/she believes is reasonable and legally supportable. If prosecution is successful, a patent application will mature into an issued patent. If unsuccessful, the patent application is eventually abandoned. Your job will be to make sure that all the formalities of this negotiation process are properly complied with so that prosecution goes smoothly and easily. Patent prosecution documents can be filed by the applicant using EFS-Web. Most can also be filed on paper or by fax. The applicant may not send any official documents by email. Most documents sent from the patent office to the applicant are usually sent via PAIR and by mail (you can opt out of paper mailings). The USPTO will use email to inform the applicant of the availability of a document viewable through the online PAIR system. Below we will lay out, step by step and document by document, the process of patent prosecution that happens after you have filed your application. Ch.5/A: Initial Processing Upon Filing 1. Electronic Acknowledgement Receipt When you file an application using EFS-Web, an application number is automatically and immediately generated, and you can download the eAcknowledgement from the EFS-Web page showing the application number and all the other application details. The e-acknowledgement will have a file name similar to efilingAck10026180.pdf, and will look like this:


188

Although filing using EFS-Web automatically gives you an application number and proof of filing in the form of the downloadable e-acknowledgement, this is not the same thing as the official filing receipt, which you get after everything is hand-checked. The EFS-Web filing system is not able to check the application for problems or missing parts. Before the application goes to the patent examiner, it is reviewed by the Office of Patent Application Processing (OPAP), formerly called, and still often referred to as, the Office of Initial Patent Examination (OIPE), which checks to make sure that all the required papers and parts of the application are present. If all is present and correct, the OPAP will confirm the filing date and application filing number and issue an official


189

filing receipt. If all is not present and correct, the OPAP will mail you a different notice explaining the deficiencies and how to correct them (discussed below). 2. Filing Receipt and Corrected Filing Receipt About two months after filing, after the OPAP will have checked everything and the patent office will send out a Filing Receipt. The Filing Receipt will list information about the application, as entered by the OPAP, all of which you should check for accuracy. If any of the information is incorrect, you should request a corrected filing receipt, for which there is no charge (note: the lack of charge is new). The information on the filing receipt includes Across the top of the filing receipt:

Application serial number Filing Date Group Art Unit (the USPTO unit examining the application) Amount of fees received Attorney docket number Number of drawings Total number of claims Number of independent claims

In the body of the filing receipt: Date mailed

Contact information (name of company or law firm) Whether application is provisional or nonprovisional (first line of paragraph) Names, cities, and states of inventors Names, cities, and states of applicants (may be the same as inventors) Power of attorney (if any) Priority data as claimed by applicant Foreign applications related to the current application Foreign filing license granted (or not) and grant date Country code and number of priority application (if any) Projected publication date Non-publication request (if any) Early publication request (if any) Entity status (Large, Small or Micro) Title of invention Preliminary class (used by the USPTO to classify the invention)

Check all of this information. Note that the applicants and the inventors may be the same or different. For example, the applicant may be a corporation to whom the inventors have assigned or are under an obligation to assign all rights to the invention. The Foreign Filing License allows the applicant to file the application in a foreign patent office. It is sometimes not granted if the invention has a military application. If granted,


190

the phrase "If Required, Foreign Filing License Granted" will appear on the filing receipt; if not granted, this statement will be absent. Text of the Foreign Filing License usually starts on the second page of the filing receipt. Example: Official Filing Receipt


191

Correction of errors in a filing receipt is straightforward. Send a letter to the Commissioner for Patents. Title the letter PETITION TO CORRECT FILING RECEIPT. Clearly explain the errors and request that they be corrected. Explain how the errors came about, and provide necessary support for the correct information. Naturally, you should include an authorization to charge your deposit account, even if the error was made by


192

the USPTO and you believe that no fee is due. It is a good idea to send a marked-up copy of the filing receipt with corrections written in by hand. File using EFS-Web in the usual way. Alternatively, you can file by mail, remembering to include a return receipt post card and using a standard certificate of mailing. Mail to: COMMISSIONER FOR PATENTS, PO BOX 1450 ALEXANDRIA VA 22313-1450. 3. Notice to File Missing Parts - Filing Date Granted If you did not send in all the required formal documents to make the application complete, but you did send enough to get a filing date and there were no pages missing from the specification or drawings, the next thing you should get from the USPTO will probably be the Notice to File Missing Parts, Filing Date Granted (form PTO-1533). Note: Always make sure that it says, “Filing Date Granted.” If that phrase is missing, that is bad news (see below). The notice will tell you what is required and when it is due. The notice should arrive within three months. The applicant is normally given two (2) months from the Date Mailed date to respond to a notice. As soon as you receive the notice, find the response due date and docket it. The most common things filed late are fees and declarations. File the response, along with any required missing parts, using the usual EFS-Web process. You generally file the following: - A completed transmittal. - A copy of the notice (not strictly necessary if using EFS-Web). - The missing parts as required by the notice. - The missing parts fee as required under 37 CFR 1.16(e). - Any required extension of time fee if filed after two months. Alternatively, mail the Response to MAIL STOP MISSING PARTS, COMMISSIONER FOR PATENTS, P.O. BOX 1450 ALEXANDRIA, VA 22313. Instead, you may file the Response by fax. Note that under the rules designed to speed up patent prosecution, waiting for the notice is considered to be an applicant‟s Failure to Engage and can adversely affect the term of the patent. Thus, it is not the common practice it once was. The rule of thumb is, if possible, to file the application complete with all documents, executed declaration, fees, and IDS, all at one time. If not possible, file the missing documents as soon as you can. The applicant is generally given two months from the mailing date of the notice to respond to a Notice to File Missing Parts. Extensions of time may be obtained in the normal way. Although it unusual, however, you may request up to five months of extensions, providing a total of seven months to reply rather than the more normal six month maximum. If an extension is obtained, the appropriate fee must accompany it.


193

Example: Notice to File Missing Parts (pg. 1)


194

Example: Notice to File Missing Parts (pg. 2)

Docketing: -3 months after filing an application, docket to see if you get a Notice to File Missing Parts (NTFMP). If you do not receive one, double-check the file to see if everything was filed and/or call the USPTO to determine the status of the application. Of course, you may have filed all required documents in the first place and will not receive a NTFMP. -2 months from the mailing date of the NTFMP (if you receive one), docket the response to the NTFMP.


195

-7 (yes 7, not 6) months from the mailing date of the NTFMP (if you receive one), docket the maximum period for response (2 months to reply + 5 months possible extension). 4. Notices of Omitted Items A. Notice of Omitted Items in a Nonprovisional Application If a nonprovisional application is missing one or more pages of the specification or drawings, but there is enough of the application present to be thought of as providing a written description of the invention (and there is still at least one claim and at least one drawing, if drawings were meant to be sent), then the OPAP will grant the application a filing date and send the applicant a Notice of Omitted Item(s) in a Nonprovisional Application. (The rules for Provisional applications are slightly different and are dealt with at the end of this section). The Notice of Omitted Item(s) will give the applicant a set period of time to reply. The time period will be extendible up to a total of seven months maximum (not six – but ALWAYS check) by filing a petition for extension of time and paying an appropriate fee (37 CFR § 1.136). The applicant may reply by doing one of four things: (1) Petition to establish that the missing documents were, in fact, received in the PTO, accompanied by evidence of the deposit and the petition fee. (2) Submit the missing page(s) along with a petition under 37 CFR 1.182 and a fee, requesting that the date of such submission be accepted as the new filing date of the application. (3) Accept the application as deposited with the USPTO on the original filing date. This option requires the filing of a response to the Notice of Omitted Items with an appropriate amendment (e.g., a substitute specification) within the extendable time period set out in the Notice of Omitted Items. The substitute specification should be drafted to reflect correct page and figure numbering in view of the missing pages of the specification and/or drawings. A fee may be required for submitting the substitute specification and for any extension of time. Required fees will be set out on the Notice of Omitted Items. (4) If the missing text or figure(s) was/were present in a previously filed application from which this application claims priority, and if the previous application was properly incorporated by reference, then the applicant can file a preliminary amendment adding in the missing text or figures, exactly as they appear in the incorporated application. See http://www.uspto.gov/web/offices/pac/mpep/documents/0600_601_01_g.htm. If the applicant wishes to pursue option (1) and try to prove that the missing documents were received by the USPTO on the original filing date, the applicant must supply, in a timely manner, three things:

(a) A petition under 37 CFR 1.53(c). (b) A fee under 37 CFR 1.17(i) or 1.17(q).

http://www.uspto.gov/web/offices/pac/mpep/documents/0600_601_01_g.htm


196

(c) Evidence that the missing pages were received. The most common evidence submitted is the e-receipt that you will have received when filing using EFS-Web. The petition fee will be refunded if it is determined that the applicant's claim is correct. Note: If this option is selected, it is considered highly advisable to submit a new and complete application as soon as possible, in case the petition is not accepted.

If the applicant chooses option (2), the applicant must submit, in a timely manner, four things:

(a) the missing pages of the application, (b) a petition under 37 CFR 1.182, requesting acceptance of the missing papers and accepting the later filing date, (c) a fee under 37 CFR 1.17(h), and (d) a new declaration referring to the newly supplied pages, signed by all the inventors.

If the applicant chooses option (3), the applicant must, without adding any new matter, file one of the following:

(a) For a missing page of the specification, the applicant must submit a substitute specification and claims properly amending the specification to consecutively renumber the pages and cancelling any incomplete sentence, in compliance with 37 CFR § 1.121(b)(3) and 37 CFR § 1.125. (b) For a missing figure of the drawings, the applicant must submit replacement drawing sheets and a substitute specification (without claims) to properly address omitted or relabeled drawings, in compliance with 37 CFR § 1.121(b)(3), 37 CFR § 1.121(d) and 37 CFR § 1.125. (c) For a missing page of the claim set, the applicant must submit a replacement claim listing any necessary claim amendments under 37 CFR § 1.121(c). (d) For a missing or unreadable compact disc, the applicant must submit a substitute specification (without claims) deleting references to the compact disc and its files, in compliance with 37 CFR § 1.121(b)(3) and 37 CFR § 1.125. (e) For a missing or unreadable file(s) on the compact disc the applicant must submit a substitute specification (without claims) deleting references to the compact disc and its files (as above) and a replacement transmittal letter, in compliance with 37 CFR § 1.52(e)(3)(ii), listing all of the files except for the files that are missing or unreadable.

It should be noted that the Notice of Omitted Items will now be considered the same as an Office Action for the purpose of failure to engage within the set time for response, with the corresponding penalties applied to Patent Term Adjustment. See 35 USC 154(b)(2)(C)(ii) and 37 CFR 1.704(b).

http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_121.htm













http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_154.htm





197

If the applicants do not to reply to the Notice of Omitted Items within the set period (plus extensions), then the application will become abandoned. This is a departure from previous practice, in which failure to reply was considered constructive notice to accept the application as filed with the USPTO, with pages missing. Extensions of time are allowed up to the seven-month maximum (not the more usual six – but ALWAYS check) by filing a petition for extension of time and paying the appropriate fee. Conversely, the applicant may find it easier to resubmit the complete application as soon as possible as a new application, with a new filing date. In fact, the MPEP suggests as much. File using EFS-Web in the usual way. Or mail the response to: COMMISSIONER FOR PATENTS, P.O. BOX 1450 ALEXANDRIA, VA 22313. A cautionary note: Although these rules have been published in the Official Gazette, there seems to be some confusion, and the practitioners at the patent office may not immediately or uniformly apply these new rules. Hence, the old rules still may occasionally be used. If you receive a Notice of Omitted items, check to see if it is under the new rules, which give you a fixed but extendable period for reply, or if it is under the old rules, which gives the applicant a non-extendable two month period to reply by doing either option 1 or 2, above. Under the old rules, the applicant could also choose a third option. The applicant could decide not to reply to the Notice of Omitted Items within the two-month period. In this case, the original filing date would be maintained, and it would be assumed that the applicant accepts the application as filed with the USPTO, with pages missing. The applicant would have to submit an amendment to renumber the pages consecutively and amend any consecutive sentences. A preliminary amendment is usually used for this purpose and is filed before the first Office Action is mailed. B. Notice of Omitted Items in a Provisional Application In the case of a provisional application that has been filed with omitted items, the rules are the same as for options 1 and 2 above, except that the period set for reply is two months and is non-extendable. The third option is entirely different. If the OPAP determines that a provisional application has been filed with omitted items but still warrants a filing date, the applicant will receive a Notice of Omitted Items that will give the applicant two months to reply. This period for response is NOT extendable. The applicant may then do one of three things. The applicant may take either option 1 or 2 above, i.e., may either (1) petition to establish that the missing documents were, in fact, received in the PTO, or (2) submit the missing pages and accept the date of such submission as the new filing date of the application. Or the applicant may (3) decide not to reply to the Notice of Omitted Items within the two month time limit. In this case, the


198

original filing date will be maintained, and it will be assumed that the applicant accepts and constructively elects the application as filed with the USPTO, with pages missing. In the nonprovisional filing the applicant may wish to submit the missing pages. 5. Notice of Incomplete Application - Filing Date Not Granted Hopefully you will never see one of these. If the application is missing so much of the specification and/or figures that there is not even enough information to provide a written description of an invention, the OPAP will not grant the application a filing date and will issue a Notice of Incomplete Application (see MPEP 601.01(d)). The Notice of Incomplete Application will tell you what is missing and give you two months (check and docket the date) to reply. The applicant has three choices: (a) Petition to establish that the missing documents were, in fact, received in the PTO. (b) Petition to establish that the specification received by the USPTO does, in fact, provide sufficient written description of the invention. (c) Submit the missing pages and accept the date of such submission as the new filing date of the application. If the applicant wishes to pursue option (1), the applicant must supply all of these: (a) A petition under 37 CFR 1.53(e). (b) A fee under 37 CFR 1.17(i) or 1.17(q). (c) Evidence that the missing pages were received - most commonly the date-stamped e-receipt that you will have received when filing using EFS-Web, but evidence of strict operating procedures is also helpful. The petition fee may be refunded if it is determined that applicant‟s claim is correct. If this option is selected, it is considered highly advisable to submit a new and complete application as soon as possible, in case the petition is not accepted. If the applicant chooses option (2), the procedure is essentially the same as for (1), except that the evidence provided must show that whatever pages of the specification the USPTO received, these were sufficient to provide a written description of the invention. This could be the case, for example, if much of the specification were missing but the USPTO had acknowledged receipt of a drawing that was self-explanatory and showed every aspect of the invention. Further note that claims, if sufficiently descriptive, may be legitimately used to fulfill the written description requirement for the invention. If the applicant chooses option (3), the applicant must submit four things: (a) The missing pages of the specification (including at least one claim). (b) A petition under 37 CFR 1.53(e), requesting acceptance of the missing specification and accepting the later filing date. (c) A fee under 37 CFR 1.17(i). (d) A new declaration referring to the newly supplied pages, signed by all the inventors.


199

Again, the applicant may find it easier and cheaper to (re)submit a complete new application as soon as possible and accept the new filing date. The USPTO generally gives the applicant two (2) months to reply to a Notice of Incomplete Application, and extensions of time may be obtained in the normal way. On the other hand, you will probably want to respond as soon as practically possible. File using EFS-Web in the usual way. Or mail the response to: COMMISSIONER FOR PATENTS, P.O. BOX 1450 ALEXANDRIA, VA 22313 If you have also omitted to send one or more non-essential elements (e.g., fee), you will receive a separate Notice to File Missing Parts - No Filing Date that will refer to the Notice of Incomplete Application, list the missing (non-essential/formal) elements, and (may) give you two months to supply them. 6. Other rarely encountered notices There are a few rarely seen variations on the above notices, which are described in MPEP 601.01. These include

� Notice of Informal Application (form PTO-152). � Notice of Improper Application (form PTO-1534). � Notice to File Corrected Application Papers (form PTO-1660).

There are specific procedures and notices that deal with the situation in which there is a complete absence of either claims (MPEP 601.01(e)) or of drawings (MPEP 601.01(g)). These notices will not be discussed in detail in this course, but they are quite similar to those already presented and come with explicit lists of the deficiencies to be corrected, plus clear instructions explaining how to correct them. If you receive one, it will be quite clear what you have to do. Ch.5/B: Patent Examination Once OPAP has determined that the patent application is sufficiently complete to allow examination to begin (even if certain formal documents are still due), the application will be sent to a patent examiner in the relevant art unit (a unit where the examiners are experts in one specific area of technology, such as software or biotech). He/she will examine the claimed invention to determine if one or more claims meet the legal standards required for patentability. Remember, a patent application will usually have many claims, and while one claim may be found patentable, another in the same application may be rejected. The examiner will then communicate his/her conclusions to the applicant in the form of an Official Action (Office Action).


200

First Office Action Estimator The USPTO provides a useful tool for estimating when you will receive a first Office Action. http://www.uspto.gov/learning-and-resources/statistics/first-office-action-estimator Enter information from your filing receipt including Group Art unit, class and subclass and you will automatically receive an estimate of when a first Office Action is likely to be sent.

http://www.uspto.gov/learning-and-resources/statistics/first-office-action-estimator


201

1. First Action Allowance In the rare event that the examiner finds all the claims to be immediately patentable, he/she will send an official action called a Notice of Allowance and Issue Fee Due. The Notice of Allowance and Issue Fee Due (usually just referred to as the Notice of Allowance) gives the applicant a certain time to pay the issue fee, and it is followed by an Issue Notification that specifies a date on which the application will actually be issued. Since allowance usually comes only after a considerable amount of grueling patent prosecution has taken place, we will discuss it in detail a little later on, after we have talked about prosecution. 2. Restriction Requirement Generally, the first substantial thing the examiner does is to look at the claims and determine if there are one or more separate and distinct inventions claimed. Many scholarly legal articles have been written about what makes two inventions separate and distinct, and there is no need for you to try to understand this complex concept. If the examiner determines that more than one separate and distinct invention is present, as is often the case, then a Restriction Requirement will be issued. A Restriction Requirement forces the applicant to choose to pursue (prosecute) one group of claims that corresponds to one invention. For example, say the application is to a new computer chip, and the claim set includes claims 1-5 to the chip, claims 6-10 to a method of making the chip, and claims 11-16 to a method of using the chip in a handheld computer. Here, the examiner may determine that there are three separate inventions:

Group I (claims 1-5) to the chip, Group II (claims 6-10) to a method of making the chip, and Group III (claims 11-16) to a method of using the chip in a handheld computer

You may also be asked to elect a species, which is a specific sub-group of invention. The applicant must elect to prosecute one of the groups (and a species, if required), and the examiner will take no further action until an election is made. The remaining non-elected claims will be withdrawn from consideration in the present application, but they may be pursued in a later Divisional or Continuation application. The withdrawn claims are not prosecuted but are still said to be pending in the application. Think of them as being alive but dormant. In some circumstances, claims that were withdrawn can later be reinstated and allowed. Generally, at the end of the prosecution process, when some claims have been allowed, the withdrawn claims have to be cancelled before the patent can issue.


202

Cancelled claims are not dormant. Rather, they are dead and cannot be brought back to life, although identical, completely new claims can be added by amendment. A restriction must be answered by election a group and species, if requested. But in the same response, the restriction may be Traversed. This means that the attorney will argue that for various legal reasons, the restriction is improper. Whether or not the restriction is traversed, it is filed in the same way. When a Restriction Requirement is received, docket the response due date. It is usually one or two months from the mailing date of the Restriction Requirement (but always check for any variations). See example. Extensions of time may be obtained in the usual way, up to six months from the date of mailing of the Restriction Requirement.


203

Example of Summary page of Restriction Requirement. Note that box 8 is checked.


204

Example of second page of Restriction detailing groups for election

3. Responding to the Restriction Requirement When responding to a Restriction Requirement, the applicant must elect one group of claims (defining one invention) to prosecute, but it can elect with traverse. Traverse means that the applicant submits arguments protesting the restriction requirement and explaining why it is unnecessary. Applicants would generally prefer to have no


205

restriction, allowing all claims to be prosecuted in a single application and avoiding the cost of filing a second or third Divisional. Nonetheless, for a number of reasons, elections are often made without traverse. If the applicant‟s attorney does decide to traverse the restriction requirement, it must distinctly and specifically point out supposed errors in the restriction requirement. If the supposed errors are not distinctly and specifically pointed out, the election will be treated as an election without traverse. Claims that have been restricted out of an application are not lost forever and can be pursued in a separate Divisional application (discussed later). A Restriction Requirement is sometimes received and responded to by telephone. In the interest of efficiency, the examiner may telephone the patent attorney and request an oral election. If the attorney and the examiner agree on an election, the examiner makes a record of this agreement and sends a copy to the attorney to put in the file. Usually, the examiner will send the applicant a written Restriction Requirement The applicant may then file a written Response to Restriction Requirement within the specified time limit or may choose to respond by telephone, if the examiner will allow it. When responding to a Restriction Requirement, the applicant may additionally choose to submit amendments to the claims or specification in the same document. When the Response has been finalized, inspect it for accuracy of application serial number, filing date, docket number, inventor information, etc. The following papers should be filed in response to a restriction requirement: - A transmittal letter. - The Response to Restriction Requirement. A petition for Extension of Time, and any fee authorization that may be required, is generally requested in the body of the response document, although some practitioners still prefer to use a separate document. The Response to Restriction Requirement documents should be filed using EFS-Web, faxed to the central fax number - (571) 273-8300 - or mailed, using a Certificate of Mailing by First Class Mail procedure, to MAIL STOP AMENDMENT, COMMISSIONER FOR PATENTS, P.O. BOX 1450 ALEXANDRIA, VA 22313. 4. The Office Action After the Restriction Requirement (if any), examination begins on the merits (i.e., concerning issues of patentability), and an Office Action will be mailed. The examiner does a prior art search to find previously published patents or other documents that are relevant to the invention. Many relevant references should already have been cited by the applicant in the IDS. The examiner then reviews the application in view of the prior art references and the law and makes a determination of patentability.


206

If all the pending claims are considered allowable (very rare), a first action allowance will be given (see above), and the examiner will send you a Notice of Allowance. Occasionally you will be sent what is called an Ex parte Quayle action. See the example below with Box 4 checked by the examiner. In this Office Action, the examiner has decided that the claims are allowable except for certain formalities, such as the need for better drawings, and prosecution on the merits is closed. In this case, you are given a time period (usually two months) to correct the formalities. The examiner will then send you a Notice of Allowance. If the examiner decides to reject or object to one or more claims, he/she will send a written Office Action explaining the decision. In the Office Action, the examiner must summarize the standing of all the claims -- that is, identify each claim by claim number and say whether that claim is - pending (alive and under active consideration), - withdrawn from consideration (dormant, not being actively examined), - rejected (considered by the examiner to be unpatentable under law), - objected to (would be allowed if some simple formal changes are made), - allowable (in a condition to issue as it is), or - cancelled (no longer pending and will not be examined). What is more, the examiner must explain the reasons why claims have been rejected or objected to. If the examiner has found a new prior art reference and is rejecting a claim in view of that reference, then the examiner must supply a copy of that new reference to the applicant. Note that it is the intention of the patent office, in the future, to cease mailing copies of the prior art references and make them available on the Internet instead.


207

Example of Ex parte Quayle Office Action Summary page. Notice that box 4 is checked.


208

Example of Office Action Summary page rejecting all claims. The examiner‟s arguments would be set out in following pages (not shown).

5. Reviewing the Office Action and Docketing Due Dates When you receive an Office Action, begin by entering into the docket system the date that the Office Action was mailed or transmitted. This date will be printed on the front


209

page of the Office Action and is the date from which all response due dates will be calculated. Do NOT use the received date. Example: Date Mailed – Office Action

Check the period for response (usually three months), calculate the response due date, write it on the front of the Office Action (if you have a paper copy), and enter it into the docketing system. Also, calculate the drop dead date (six months) and write this date on the front of the Office Action. Your docketing system should automatically generate a number of possible due dates corresponding to dates at which a response may be filed with successive extensions of time. Now, all you have to do is match the Office Action with the appropriate patent file and give it to the attorney. The due date for filing a response to an Office Action is usually three months from the mailing date of the Office Action, but it can vary and even be as short as 30 days. Usually, therefore, you can get three months of extensions, giving you a maximum of six months in which to reply to the Office Action. For example, if the Office Action is mailed on November 15, 2012, and the response is due three months from mailing, you should docket: -November 15, 2012 as the date the OA was mailed -February 15, 2013 as the 3 month date the Response to OA is due -March 15, 2013 as the 4th month due date -April 15, 2013 as the 5th month due date -May 15, 2013 as the 6th month due date (the Drop Dead date)


210

6. IDSs in Related Applications If any newly found references are received with the Office Action, then you may also need to docket a date by which an IDS is due in any related case(s). Remember that the applicant is under a strict obligation to inform the patent office of any reference it is aware of that may be important for a determination of patentability. If a newly cited reference is received (either in a non-US examination report or by any other means), then you should look to see if there are any related patent applications (e.g., Divisionals or CIPs) in which you have a duty to cite the reference. Identify all related applications and check to see if the reference has already been cited. If it has not, then an IDS citing the newly received reference(s) must generally be filed in the related case within three months of the date upon which the applicant became aware of the reference. (The date that the applicant became aware of the reference is the date upon which the reference was received by the applicant, not three months from the mailing date of the Office Action.) 7. Responding to the Office Action After receiving an Office Action, if the applicant chooses to continue to pursue the application, it files a written response on or before the due date. For reasons that will be clear in a moment, the Response to the Office Action is often called an Amendment. In the Response, the applicant will request that the examiner reconsider the application, and additionally, will generally do one or more of the following: - amend claims, - add claims, - withdraw claims, - cancel claims, - amend the specification, - amend the drawings, or - present arguments to overcome the rejections (and/or objections). Amending a claim means adding or deleting words and/or punctuation. To make an amendment, the applicant proposes the changes desired and requests that they be entered by the examiner. All these things, particularly amendment of claims and specification, are done in a particular, formalized way (discussed in detail below). It is the responsibility of the attorney/agent to draft the response in the correct way, but you will be expected to be able to spot errors in the formalities of the amendment. 8. Making Amendments It is mandatory to submit amendments in the following format. If an amendment (including a preliminary amendment) includes one or more non-compliant elements, the applicant will be notified via a Notice of Non-Compliant Amendment that the non-


211

compliant section(s) needs to be re-submitted in compliant form within a period set by the patent office. Note: The revised amendment format does not apply to reissue applications. Such amendments are governed by 37 CFR 1.173. AMENDMENT FORMAT Begin each section on a separate sheet. Each section of an amendment must begin on a separate sheet. This is to make scanning easier. For example, each of the following four sections of an amendment paper must start on a separate sheet:

a) Introductory Comments. b) Amendments to the Specification. c) Amendments to the Claims. d) Remarks.

Amendments to the Claims During a response to an Office Action, claims may be amended, added, withdrawn, or cancelled. Withdrawn claims are dormant - they are still pending but not under active consideration, and they may be revived later during prosecution. But cancelled claims are dead; they have been permanently removed and cannot be revived. Claim numbers must not be reused, so if you file 14 claims and claims 12 through 14 are cancelled, but then you add 5 new claims, the numbering of the new claims starts at 15 and continues on to 20. a) A complete listing of claims is always required. If an amendment adds, changes, or deletes any claim, a complete listing of all claims that are or ever were in the application must be presented, whether or not the claim(s) remains under examination in the application. The full text of all claims must be presented – with two exceptions. The only two exceptions to the rule that the text of all claims must be presented are: (1) Claims that have been cancelled (not just withdrawn). (2) Claims presented in a previous amendment but that were not entered. Do not present text of a cancelled or non- entered claim, but write, for example, "6. (cancelled)" or "6. (not entered)." Consecutive non-entered or cancelled claims may be grouped together, e.g., "Claims 9-17 (not entered)." Even if no claim amendments have been made, such as in response to a restriction requirement, the applicant may still set out a listing of all the pending claims for the sake of convenience.


212

b) Ascending order and status identifier are required. Claims must be set out in the usual numerical order, beginning with claim 1. A status identifier must be provided for every claim and be provided in parenthesis following the claim number: "Claim 1. (original)," "Claim 6 (currently amended)," "Claim 14 (withdrawn)," or "Claim 17 (new). A list of acceptable status identifiers is set forth below. The text of all claims under examination must be submitted each time any claim is amended, except that cancelled claims should be indicated by only the claim number and status (see examples below), and the text of cancelled claims should not be presented. Note, however, that the text of the withdrawn claims should be presented. Multiple status identifiers must NOT be used for any single claim. c) Editing markings in all currently amended claims are required. All claims being currently amended must be submitted with editing markings to indicate the changes made relative to the immediate prior version of the claims. The changes in any amended claim should be shown in the following manner: Underlining is used for adding text (but not for entirely newly added claims) Strikethrough is used for deleting text consisting of five or more consecutive characters Double brackets [[…]] are used for deleting text with fewer than five consecutive characters or for deleting matter with five or more consecutive characters when a strikethrough cannot be easily perceived If changes must be made to punctuation or difficult-to-read characters, the text before and after may be deleted with strikethrough, then amended text may be inserted by underlining. No separate clean version should be submitted for currently amended claims, as this requirement has been eliminated. Markings should be made only in claims being currently amended in the present amendment, not to previously amended claims. Here is an example showing how to use double brackets when deleting text with fewer than five consecutive characters:

Changing "A 4 cornered surface" to "A 5 cornered surface" would be done as follows: “A [[4]] 5 cornered surface.”

Here is an example showing how to use strikethrough where it is clearer to strike out additional text before and after the characters to be deleted:

Changing "A chain-saw" to "A chainsaw" would be done as follows: “A chain-saw chainsaw.”


213

The spirit of the rule is that strikethrough should be used when there are five or more characters to be deleted, and double brackets should be used when there are fewer than five. Where the meaning of the amendment would not be clear using the rule, though, the rule can be broken. d) Clean text is required for all pending claims not being currently amended. The text of pending (not cancelled) claims not being currently amended that are under examination must be presented in a clean version in the listing. e) Statement of claim cancellation or addition: A claim may be cancelled by merely indicating the status of the claim as (cancelled) after the claim number. Any new claim added by amendment must be indicated by the identifier (new) and must not be underlined. Of course, additional claims may be subject to additional fees, as appropriate. f) When grouping of claims is permitted: Consecutive cancelled or non-entered claims may be aggregated into a single group, e.g., "Claims 1 - 5 (cancelled)" or "Claims 1 - 5 (not entered)." g) Status Identifiers that may be used: The following status identifiers, with acceptable alternatives, must be used to indicate the status of the claims. They should appear in parentheses after the claim number: 1. (Original): Claim filed with the original application, i.e., not added by preliminary amendment or other amendment. 2. (Currently amended or Presently amended): Claim being amended in the current amendment paper. Currently amended claims must include markings (strikethrough, double brackets, or underlining) to indicate changes. 3. (Cancelled or Deleted): Claim cancelled from the application (either in current amendment or previously). Do NOT present text of the cancelled claim. Consecutive canceled claims may be grouped together, e.g. Claims 4-8 (cancelled). 4. (Withdrawn): Claim still pending but in a non-elected status. The text of the claim must be presented. 5. (Withdrawn-currently amended): Withdrawn claim that is also being amended with the current filing. The claim must include markings (strikethrough, double brackets, or underlining) to indicate changes. 6. (Withdrawn-new): A claim that is newly added but simultaneously withdrawn. 7. (Previously presented, Previously amended, or Previously submitted): Any claim added or amended in an earlier amendment. 8. (New): Claim being added in the current amendment paper. Text must be in clean form with no underlining. 9. (Not entered): Claim presented in a previous amendment but where the claims or the entire amendment was not entered. Do not present text of a non-entered claim. Consecutive non-entered claims may be grouped together (e.g., Claims 9-17 not entered).


214

h) Example of a listing of claims Claims 1-5 (cancelled) Claim 6 (withdrawn): A bucket comprising a cylinder closed at one end Claim 7 (previously presented): A bucket with a handle Claim 8 (currently amended): A bucket with a plastic metal handle Claim 9 (currently amended): A bucket with [[an]] a non-slip handle Claim 10 (original): A bucket with a wooden handle Claim 11 (cancelled) Claim 12 (previously presented): A bucket with plastic sides and bottom Claim 13 (new): A bucket having a pouring lip Claims 14-20 (not entered) Note for the more experienced practitioner: The following status identifiers previously in use have been eliminated and may no longer be used: previously amended; previously added; reinstated-formerly claim #_; previously reinstated; represented - formerly dependent claim # _; and previously re-presented. i) Submit only one version of amendments. Only one version of the amendments, with editing markings, should be provided, unless the applicant is submitting an entire substitute specification. Amendments to the Specification and Abstract (a) Amendments to the specification The specification may be amended to correct typographical errors, or at the request of the examiner in an Office Action. Amendments may also be made to add text from a patent, or other document that has been incorporated by reference, into the application. For example, amendments to the specification, other than to the claims, computer listings (37 CFR 1.96) and sequence listings (37 CFR 1.825), amendments must be made by editing, adding, deleting or replacing a paragraph, or by replacing a section or paragraph, or by filing a substitute specification. See 37 CFR 1.121. (i) Amendment, deletion, replacement, or addition of a new paragraph. Amendments to the specification, including amendments to a section heading or the title, must be made by submitting written instructions to amend, delete, add, or replace a specifically identified paragraph. You must supply the full text of any amended paragraph with markings to show all the changes in that paragraph relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of deleted matter must be shown by strike-through, or by double brackets to show deletion of five or fewer consecutive characters, or if strike-through cannot be easily perceived. It is not necessary, but you may also submit a clean version of the amended paragraph without any editing marks. We suggest you do this.


215

If you are adding one or more entire new paragraph(s), you must submit a clean version of the paragraph(s) showing the full text of the added paragraphs without any underlining. Note that if a whole paragraph is to be deleted, this whole paragraph must not be presented with strike-through. You need to give a very clear written instruction to delete the paragraph. You should identify a paragraph by its paragraph number or include a few words from the beginning and the end of the paragraph, if needed. (ii) Amendment by replacement of an entire section. If the specification contains section headings such as provided in 37 CFR § 1.77 e.g.: Background of the Invention; Brief Summary of the Invention; Detailed Description of the Invention, etc., amendments may be made by submitting: (a) A clear instruction to delete one section of the specification and to replace such deleted section with a replacement section; and (b) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of deleted matter must be shown by strike-through, or by double brackets to show deletion of five or fewer consecutive characters, or if strike-through cannot be easily perceived b) Substitute specification A substitute specification is generally provided if there are a large number of amendments to be made. If you are submitting a substitute specification (37 CFR 1.125) you must provide the USPTO with all of the following: (i) A marked up version showing all changes. (ii) A clean version without any editing markings. (iii) A statement under 37 CFR 1.125(b) indicating that the substitute specification contains no new matter. (iv) A written instruction to the USPTO to replace the original specification with the new substitute specification. A substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter. A substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strikethrough except where double brackets are used for deletion of five or fewer consecutive characters, or if strikethrough cannot be easily perceived. An accompanying clean version (without markings) must also be supplied.


216

Numbering the paragraphs of the specification of record is not considered a change that must be shown by underlining. You do not need to add the words, “substitute specification” to the document, but some attorneys do place these words in the header. c) Amendments to the abstract If changes are minor, submit a marked-up replacement abstract with no clean version. If changes are extensive, submit a new, clean abstract, accompanied by an instruction to delete the previous abstract and replace it with the new one. No marked-up version is required. Any new or replacement abstract must be submitted on a separate sheet (37 CFR 1.72). Amendments to the figures Amendments to the figures are made by submitting replacement sheets that include the desired changes, without markings. The figures must comply with § 1.84. The changes must be explained in the accompanying remarks section of the response. If the amended drawings are not approved, the applicant will be notified in the next Office Action. Any amended drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even though only one figure may be amended. The figure number in the amended drawing should not be labeled as amended – e.g., do not say, "Fig. 7 (amended)." You should add an identification label in the top margin of the drawing sheet. It should include the words Replacement Sheet. Annotated drawing sheets may, at your option, be submitted with the replacement figures, but they are not required. Annotated drawing sheets are marked-up copies of the amended figure(s) with annotations showing the changes and would be submitted if required by the examiner. They are not entered as part of the official drawings for the application. Annotated drawing sheets must be identified in the top margin as Annotated Sheet. Replacement and annotated drawing sheets, if any, should follow the last page of the amendment paper as attachments. Deletion of a figure requires

(i) A specific instruction to delete the figure. (ii) A replacement sheet that does not include the canceled figure (if that sheet contained more than one figure, one of which is now being deleted). (iii) An amendment to the specification to make corresponding changes to the description of the drawings. (iv) If any other figures need to be renumbered, they must be amended with revised figure numbers by using replacement drawing sheets.


217

Remember, any amendment paper that is submitted to the USPTO that does not follow the amended practice will generate a Notice of Non-Compliant Amendment that will identify the problem, and you will normally be given between one and two months (but always check) to respond. Patent term adjustment reductions may be incurred if a delay in prosecution is caused by the submission of a non-compliant amendment (37 CFR § 1.704(c)(7)). After Final amendments After Final amendments have special rules, which we shall discuss in detail later in the sections covering Requests for Continuing Examination (RCEs) and responding to the Final Office Action. A note about amendments in international applications The revised amendment practice under 37 CFR 1.121 does not apply to amendments filed in the international stage of an international application (we will deal with these later in the course). Such amendments must be in compliance with the Patent Cooperation Treaty (PCT) amendment procedure (PCT Articles 19 and 34(2)(b)). Status identifiers are not to be used during the international stage. Amendments filed in the national stage (pursuant to 35 USC 371) of an international application must comply with the revised US amendment practice. The status identifier original must be used only for claims that were presented on or before the international filing date and that have not been modified or canceled. 9. Format of the Response to Office Action The Response to an Office Action is set out in a standard format, generally including the following parts: - The docket number (usually put in the header). - The Certificate of Mailing/transmission. - Heading with all the invention and inventor information, including title of the application, serial number of the application, filing date, first named inventor, examiner name, and group art unit number. - Address, e.g., COMMISSIONER FOR PATENTS, P.O. BOX 1450, ALEXANDRIA VA 22313-1450. - Name of the Document, e.g., Response to Office Action. - Changes in the Specification, if any (showing new paragraph to be inserted). - Changes in the claims, if any (showing edited or new claims). - Remarks (arguing against rejections and explaining amendments). - Conclusion (that the amended claims are now allowable). - Authorization to charge fees or statement that check is enclosed. Below is an example of a Response to an Office Action. It shows the language and layout typically used in response. In this example an extension of time is required.


218

Your place of work will probably have its own way of doing things, but it will be similar to this. We have included all sections as if you were amending the claims and the specification, but if either the claims or the specification is not being amended, then the corresponding sections and text should be omitted. Very often, only the claims are amended. Quite often, too, neither claims nor specification is amended, and the response contains only the attorney's arguments (in the Remarks section). Remember, in an amendment, each section, such as IN THE SPECIFICATION and IN THE CLAIMS and REMARKS must be started on a separate sheet.


219

EXAMPLE – Amendment format >Insert Certificate of Mailing< (Not required if filed using EFS-Web)

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re Application of: Edmondson, C. Title: Glow In The Dark Sausage Serial No.: 62/123,456 Examiner: Weinerschnitzel, A. Filing Date: 12/12/14 Group Art Unit: 1642 Commissioner for Patents Mail Stop Amendment PO Box 1450 Alexandria VA 22313-1450

RESPONSE TO OFFICE ACTION Dear Sir: This is a response to the Office Action mailed on ______. A three month period was set for response. The applicants hereby petition the Commissioner and request a one month Extension of Time, and herewith submit the appropriate fee/authorization. The Extension of Time extends from the period for response until ______. The Applicant hereby requests reconsideration of the above referenced patent application in view of the following amendments and remarks.

>PAGE BREAK<

IN THE SPECIFICATION Please amend paragraphs [0022] and [0023] as follows: [0022] Figure [[2a]] 2 is a perspective of a prior art H – tree 30 having LC tank networks; [0023] Figure 2b is a schematic depiction of an H - tree driven clock grid 38;

>PAGE BREAK<

IN THE CLAIMS

Please amend the claims as follows:… >Insert a complete listing of claims showing claim status in parenthesis as required and indicating claim amendments using strikethrough or bracketing for deleted text and underlining for added text<

>PAGE BREAK<

REMARKS


220

>Insert attorney's arguments that the claims are patentable, etc.<

CONCLUSION

In light of the above amendments and remarks, applicant submits that the claims are in condition for allowance, and requests that the outstanding rejections be withdrawn. If a telephone conference would expedite allowance of the claims, the examiner may wish to telephone Applicants’ Attorney at [phone number]. Applicants believe that an extension of time fee of $____ is due, and the Commissioner is hereby authorized to charge this amount to Deposit Account No. ____. If the USPTO determines that a further fee is due, the Commissioner is hereby authorized to charge any additional fee to the same account. Respectfully submitted, >Signature block<


221

10. Proofing and finalizing the Response to Office Action Once the attorney or agent has drafted the Response to the Office Action, you need to proof the document, paying close attention to - Whether any new claims were added or if the number of independent claims has changed. When claims are amended, the number and dependency of claims may change, in which case additional claim fees may be required (see Fee Calculation Sheet). Count the claims again and enter the new claim count on the transmittal or separate Fee Calculation sheet. Calculate and enter any fee due. - Spelling and formatting. - The heading, making sure the application data, such as the filing date, serial number, inventors‟ and applicant‟s names, etc. are correct. - Whether an Extension of Time is necessary, and, if so, that the appropriate petition is included. - If filing using mail, that a Certificate of Mailing by First Class Mail is present on the first page of each document being submitted. After you have completed the necessary papers and have proofed the response, resubmit the packet to your attorney or agent for his/her signature. The packet sent to the USPTO should include - response to Office Action, - transmittal, - fee calculation sheet (may be part of the transmittal), - fee or deposit account authorization, and - petition for Extension of Time, if required. Once the documents have been signed, make copies of all documents. You will most likely need one copy for the file and one copy for the client, if applicable. Your firm or attorney may require additional copies. Of course, if you are in a paperless office, you will not need paper copies. 11. Filing the response The response should be filed by logging in to USPTO and using EFS-Web. Click on the practitioner under whose name you are filing. If you are a practitioner, you will be sent straight to the Certification screen, where you certify that you are the practitioner. For a walkthrough with images, see Chapter 12.


222

a. Select Existing application/patent/proceeding. Enter the application number

and confirmation number, both of which will be found near the top of various documents from the USPTO, such as the Filing Receipt and the Office Action. You can also find the confirmation number in the PAIR record on the Application Data tab for the particular application. Then select what types of documents you are filing. You will usually be selecting Documents/Fees for Existing Application.

b. Select documents to be submitted. Now select and submit one or more

documents for filing. On the screen, you will be see a text box titled Files to be Submitted with a Browse button next to it. Use this to locate your .pdf document(s) to be submitted. Underneath the text box you will see the question Does your PDF file contain multiple documents? If your document contains multiple sub-documents (it usually will not), select Yes and you will be provided with additional boxes to fill in. Choose entries in the Category and Document Description boxes using the pull-down menus, and type in the page numbers that correspond to the document parts. The descriptions in the pull-down menus are fairly self-explanatory, although it can be difficult to find the appropriate Category and Document Description pair. If you are unsure, select the most logical sounding descriptions. See more under Indexing documents.

c. Upload and Validate. Once you have selected and named the document to be filed, click on the Upload and Validate button at the bottom of the screen.

d. The document will be validated by the EFS-Web system, which will check it

for errors. A moving bar will appear showing the progress of the upload. e. Validation Status. Once the .pdf files are validated by the EFS-Web system, you will get a message that tells you the validation status and name of the file to be submitted. If the document is ready to file you will get a Pass message; if not, you will get an error message. This step helps ensure that the application or document(s) comply with the USPTO requirements by catching various errors in the naming or formatting. Note that you are not submitting the application (or document) at this point. This is just the pre-submission check screen.

Once the document has been validated, you will be given a message showing the validation status (it should say, “pass”) with a blue diamond.

f. Error Messages. If you get an error message you will not be able to continue

with your submission until you correct the error. Remove the document, fix the errors, and reattach, then click Upload and Validate again until you get a message saying No validation errors found with a blue diamond. Error messages are received mostly because the file is either not in proper .pdf, the fonts are not embedded, or the file is not named using the correct naming format.

g. Warning Messages. If you get a warning message, you will be allowed to continue your submission. Although you do not have to correct the document, you may


223

want to do so. A warning message appears if, for example, your page size is not 8 ½" x 11" or A4 or if the attached is not an official USPTO version of the form.

h. Calculating Fees. Once you have validated your documents, click on the Continue button. This takes you to the Calculate Fees page. Select Regular Undiscounted, Small Entity or Micro Entity.

Calculate the fees (if any). An example of a common fee is an extension of time fee.

i. Submit Application. Once you have calculated the fees click the Continue button. This will take you to the final Submit Application page. If you are happy with everything, click the Submit button.

j. Paying fees. You will be asked if you want to pay fees now. Click Yes. You will be sent to the Financial Manager to pay. Do not forget to check all the safety net boxes to pre-authorize any fees you may have forgotten.

k. Receipt. As soon as the documents have been submitted a screen will appear telling you that the submission has been successfully electronically filed. A link to an Electronic Acknowledgement Receipt will be provided. Download and save this. The Electronic Acknowledgement Receipt will show the application data, documents filed, and time and date of filing.

l. Availability of Documents on Private PAIR. Within an hour (usually sooner)

you can see the filing in Private PAIR. Go there to view your submission.


224

Later on, you will receive a paper filing receipt, and all correspondence from the USPTO will be by paper. The USPTO will email to inform the applicant of the availability of a document viewable through the online PAIR system, if you have that option set up. Remember that all patent-related documents (applications as well as follow-on documents) filed via EFS-Web are accorded the date and time of receipt in the USPTO (EST). 12. Extensions of time When replying to an Office Action in the fourth, fifth, or sixth month after the mailing date, you must file a Request (petition) for Extension of Time, along with the necessary fee or deposit account authorization. Luckily, in patent practice (unlike trademark practice) you can request extensions of time retroactively. In other words, if you miss a deadline, you can pay for an extension, up to a maximum of six months from the date the Office Action was mailed. You can request an extension of time by paying the correct fee using EFS-Web. Some practitioners submit a separate petition submitted with the response. In either case, you should include a safety net authorization of fees for the extension of time (as above). The longer the extension of time requested, the higher the fee. The current fees can be located online at the USPTO website under Fees. An example of a standard USPTO Petition of Extension of Time form (PTO/AIA/22) is shown below.


225

Example: Petition for Extension of Time (PTO/AIA/22)

13. Correcting Inventorship Occasionally, inventorship may need to be corrected. Correction generally requires (i) a Request to Change Inventorship, (ii) an updated ADS, (iii) a new Declaration, and (iv) a


226

fee. The previous requirement for submitting a statement from the inventor(s) saying that there was no deceptive intent has been eliminated under the AIA rules. The need to change inventorship can occur because the list of inventors originally given was incorrect or because of changes in the claims. Remember that the inventors are inventors for the invention as claimed. This means that if the claims change, then sometimes the inventors must change, as well. This may happen in one of two circumstances – when claims are added and when claims are canceled. Here are three illustrative examples: Removing an inventor: There are ten pending claims and two inventors, Wendy Sjösten and Andrea Sjösten. They are co-inventors on claims 9 and 10 only. Wendy is the sole inventor for claims 1-8. If claims 9 and 10 are cancelled, then Andrea should be removed as a named inventor. Adding an inventor: There are ten pending claims and only one inventor for those claims, Wendy. But the specification of the patent application includes some subject matter that was invented by more than one inventor, Wendy and Andrea together (unclaimed but disclosed subject matter). This subject matter was not originally claimed, but subsequently the applicant decides to add new claims that do encompass this joint invention of Wendy and Andrea. Now Andrea needs to be added as an inventor. This is an unusual situation, as both inventors will usually have been listed on the original application despite the limited original claim set. Removing an inventor following a restriction: Here is a common situation in which inventorship must be changed due to claims cancelled in view of a restriction requirement. Assume that Moe invents a donut with antacid sprinkles, which causes and cures indigestion simultaneously. It is a great invention but very difficult to make as each sprinkle has to be glued onto the donut separately. So Moe and his friend Curly invent a clever method of making the donuts en mass by shooting the sprinkles onto multiple donuts using a shotgun. The inventor on the donut is Moe, alone. The inventors on the method of making the donuts are Moe and Curly. When the application is filed, both Moe and Curly are named as inventors. They then receive a Restriction Requirement from the USPTO and decide to elect to prosecute just the claims to the donut and cancel (not just withdraw) the claims to the method. Now the inventorship has obviously changed; therefore, Curly must be removed as an inventor. The canceled (method) claims can be prosecuted in a later filed Divisional application, where both Moe and Curly would be inventors. Correcting inventorship in a patent application can be a little confusing and is done using the rules set out under 37 CFR 1.48 (also see MPEP 201.03). When a request to correct or change the inventorship is filed under 37 CFR 1.48(a) after an Office Action on the merits has been sent, there is a fee (as of March 19, 2013) in addition to the processing fee, unless the request is accompanied by a statement that the request is due solely to the cancellation of claims in the application. See 37 CFR 1.48(c).

http://www.uspto.gov/web/offices/pac/mpep/documents/appxr.htm#cfr37s1.48


227

The additional fee is due no matter what the original filing date (pre- or post-AIA filing) and is set forth in 37 CFR 1.17(d). Which rules and forms you use will depend on the application filing date and why and when you are correcting inventorship. The changes to rule 37 CFR 1.48 were effective on September 16, 2012, and apply to any request to correct inventorship filed on or after that date, regardless of the application filing date. When, however, a new inventor declaration is required due to an added inventor, the filing date of the application governs which version of 37 CFR 1.63 the declaration must comply with. For an application filed before September 16, 2012, the declaration would need to comply with pre-AIA 37 CFR 1.63, and USPTO Form PTO/SB/01 can be used. Fees: You will generally need to file a processing fee under 37 CFR 1.17(i). Additionally, from March 19, 2013 (AIA rule) a $600 fee (at time of this writing) is due under 37 CFR 1.17(d) to correct inventorship if correction is requested after the first action on the merits (i.e., not a restriction requirement or a notice to file missing parts). The fee is halved for a Small Entity and halved again for a Micro Entity. Submitting a new ADS when correcting inventorship. If you need to correct an inventor‟s name, add a new inventor or applicant, or change an applicant where the name was originally omitted, incorrect, or misspelled, you should always submit a corrected, signed 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 underlining for insertions and strikethrough (or double brackets) for deletions. You have to file a corrected ADS together with 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 (such 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). Deceptive Intent. Inventorship corrections no longer require a statement regarding lack of deceptive intent. 37 CFR 1.48(f) (1): Nonprovisional with no declaration filed If an inventor or inventors are not named on filing a nonprovisional application under § 1.53(b) and the application was filed without any executed oath or declaration (e.g., filed without signatures of any inventors), then the first submission of an executed oath or declaration under § 1.63 will act to properly identify the inventors. The rules are found at 37 CFR 1.48(f) (1) Nonprovisional application - filing original executed oath or declaration corrects inventorship. Rule 1.48 (f) operates automatically to correct the inventorship upon filing of a first executed oath or declaration in a nonprovisional application. You should also file a corrected ADS (if applicable).


228

37 CFR 1.48(a): Nonprovisional with executed declaration If the wrong inventors are named in an executed oath or declaration in a nonprovisional application (including the naming of wrong inventors or the omission of one or more inventors), the inventorship may be amended to name only the actual inventor or inventors using the rules found at 37 CFR 1.48(a) Nonprovisional application after oath/declaration filed. Amendment of the inventorship requires (1) A request to correct the inventorship that sets forth the desired inventorship change. (2) An oath or declaration by the actual inventor or inventors. (3) Processing fee set forth in § 1.17(i). (4) Fee for correction after first action on merits (if applicable) under 37 CFR 1.17(d). (5) Written consent of the assignee if an assignment has been executed by any of the original named inventors.. (6) A corrected ADS. Note that the AIA rules eliminated the requirement for a statement from each person being added as an inventor and from each person being deleted as an inventor declaring that the error in inventorship occurred without deceptive intent. 37 CFR 1.48(b): Nonprovisional + claim cancellation If the correct inventors are named in a nonprovisional application and prosecution of the application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the claimed invention, an amendment must be filed requesting deletion of the non-inventors‟ names. The rules are found at 37 CFR 1.48(b) Nonprovisional application - fewer inventors due to amendment or cancellation of claims. In this case, amendment of the inventorship requires (1) A request to correct the inventorship that identifies the named inventor or inventors being deleted and acknowledges that the inventors‟ invention is no longer being claimed. This request must be signed by one of the following: (a) the attorney or agent; (b) the assignee; or (c) all of the applicants. (2) The processing fee set forth in § 1.17(i). (3) Fee for correction after first action on merits (if applicable) under 37 CFR 1.17(d). (4) A corrected ADS. 37 CFR 1.48(c): Nonprovisional + added claims If a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application and the application is subsequently amended to add claims to the subject matter, the inventorship may be amended to name the correct inventors for the application. The rules are found at 37 CFR 1.48(c) Nonprovisional application - inventors added for claims to previously unclaimed subject matter. In this case, amendment of the inventorship requires (1) a request to correct the inventorship that sets forth the desired inventorship change; (2) an oath or declaration by the actual inventors; (3) the processing fee set forth in § 1.17(i); (4) the fee for correction after first action on merits (if applicable) under 37 CFR 1.17(d);


229

(5) written consent of the assignee if an assignment has been executed by any of the original named inventors; and (6) a corrected ADS. 37 CFR 1.53: Correcting inventorship by filing a Continuation Note that correction of inventorship may also be obtained by filing a continuing application under 37 CFR 1.53, without the need for filing a request under 37 CFR 1.48, either in the application containing the inventorship error (to be abandoned) or in the new, continuing application. The continuing application is filed with the correct inventors named in the declarations and in the ADS. 37 CFR 1.48(d): Provisional + adding inventors If the name of an inventor (or inventors) was omitted in a provisional application through error, the provisional application may be amended to add the name(s) of the omitted inventor(s). The rules are found at 37 CFR 1.48(d) Provisional application - adding omitted inventors. Amendment of the inventorship in this case requires (1) A request to correct the inventorship that identifies the inventor or inventors being added and states that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors. This request must be signed by one of the following: (a) the attorney or agent; (b) the assignee; or (c) all of the applicants. (2) The processing fee set forth in § 1.17(q). (3) A corrected ADS. 37 CFR 1.48(e): Provisional + deleting inventors If a person (or persons) was named as an inventor in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name of the person(s) erroneously named. The rules are found at 37 CFR 1.48(e) Provisional application - deleting the name or names of the inventor or inventors. Amendment of the inventorship in this case requires (1) a request to correct the inventorship that sets forth the desired inventorship change, (2) the processing fee set forth in § 1.17(q), (3) written consent of the assignee if an assignment has been executed by any of the original named inventors, and (4) a corrected ADS. 37 CFR 1.48(f) (2): Provisional without cover sheet If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship. The rules are found at 37 CFR 1.48(f) (2) Provisional application filing cover sheet corrects inventorship.


230

Note that 37 CFR§ 1.324 is for correction of inventorship in a patent, and 37 CFR§ 1.634 is for correction of inventorship in an interference. 37 CFR 1.324: Issued Patent To correct inventorship in an issued patent, you must file the following: (1) A request to correct inventorship under 37 CFR 1.324. (2) A statement from each person being added as an inventor AND each person currently named an inventor, each statement either (i) agreeing to the change of inventorship or (ii) stating that the person has no disagreement regarding the requested change; and a statement from all assignees agreeing to the change of inventorship in the patent, each assignee statement complying with 37 CFR 3.73(c), or with the older version of 37 CFR 3.73(b)for applications filed before September 16, 2012. (3) A fee under 37 CFR 1.20(b). Note that the USPTO is very strict about these requirements for changing inventorship on an issued patent, and 35 U.S.C. 256, the rule that lets the patent office waive requirements, does not permit waiver of any of these requirements under any circumstances. When compliance is not possible, any correction of inventorship needs to be done via a reissue application or through a court order. 14. Declarations/Affidavits under 37 CFR 1.131 and 37 CFR 1.132 These are not the same as the oath/declaration that is sent with every application. Declarations (also called Affidavits) under 37 CFR 1.131 and 1.132 are often submitted with a Response to an Office Action. These declarations are sworn statements regarding factual issues made by the inventor(s) or by another expert, used to help persuade the examiner during prosecution. Both are legal documents written by the attorney, and neither of them involves forms that you fill out. In the past, a Rule 1.131 declaration (MPEP 715) was used to prove that the invention was invented before a certain date (usually the publication date of a reference). This process was referred to as, “swearing behind a reference” or “swearing in back of a reference.” The Rule 1.131 declaration is not now applicable to post-AIA applications subject to the first-to-file rules, since the patent now goes to the first person to file on the invention instead of to the first person to invent it. A Rule 1.132 declaration (MPEP 716) is used to submit arguments during prosecution that are not related to the invention date. Such arguments are usually of a scientific nature, arguing that the examiner is wrong about some point or another and frequently concluding that a certain invention would not have been obvious at the time of filing. The Rule 1.132 declaration is prepared by an attorney. There is no USPTO form. Make sure that the correct signatures are obtained, check that the correct invention data appears in the header, and file it as usual, using EFS-Web.


231

15. What happens after a Response to an Office Action is filed? After you have filed the response, the examiner reconsiders the application in light of all the amendments and arguments. If the examiner feels that all the pending claims now meet the requirements for patentability, a Notice of Allowance and Issue Fee Due will be sent to the applicant. If the examiner continues to reject one or more of the claims, a second Office Action will be sent to the applicant, and the applicant may respond in the normal way. On the other hand, if certain legal requirements are not met (which we will not go into), the examiner may choose to make the second (or any subsequent) Office Action a Final Office Action. 16. Responding to a Notice of Non-Compliant Amendment Occasionally your response will be rejected as non-compliant. This is usually because certain minor formalities were not complied with. In this case the examiner will send you a Notice of Non-Compliant Amendment and give you a certain time in which to reply. Generally the applicant is given one month to fix the problem if the response is to a non-final rejection. If the non-compliant response is to a final rejection, the applicant will usually be given no additional time to reply, with the consequence that an extension of time may be required, or the application may even become abandoned and have to be revived in order to file a response. Ch.5/C: Final Office Action and Advisory Action A second or subsequent Office Action can be made final by the examiner. This is indicated by the examiner‟s having checked a box on the cover sheet of the Office Action. Always look to see if this box is checked. In addition, when an Office Action is made final, the examiner will insert a standard paragraph at the end of the text of the Office Action, stating, in capitals, that the action is final. Occasionally, an examiner will forget to check the box, so it is always a good thing, with any second or subsequent Office Action, to look for the standard paragraph at the end of the text. Finality does not mean that prosecution is completely closed, but it does mean that the range of prosecution options for the applicant is greatly reduced. At this stage, the applicant is no longer allowed to make whatever amendments it wants (as a matter of right), and the examiner may refuse to enter amendments that do not comply with the After Final rules of practice. 1. Response to a Final Office Action and Advisory Action The applicant now must respond in one of four ways: 1) by filing a Notice of Appeal to the Patent Trial and Appeal Board; 2) by amending the claims in a way that makes them allowable and canceling non- allowable claims;


232

3) by filing an RCE or other type of Continuation or Divisional; or 4) by abandoning the present application and giving up altogether. As with all Office Actions, you will almost invariably have three months to respond, with the final or Drop Dead Date (abandonment) occurring six months after the mailing of the Final Office Action. However, there is a special, seemingly odd rule for the timing of a response to a Final Office Action that affects the Extension of Time Fees that you must pay. If you file a response within two months of the mailing of the Final Office Action, you will receive an Advisory Action. The Advisory Action is a sort of semi-formal last chance for advice from the examiner, before prosecution closes, telling the applicant why the claims are being rejected and giving the applicant a last chance to fix things. Now, the odd rule is that if the Advisory Action is not mailed until after the three month period (from the mailing date of the Final Office Action), the period for the applicant's response will be said to expire on the date that the Advisory Action is mailed, and any Extension of Time fee will be calculated from this date rather than from the original three-month date. In effect, this means that the applicant is not unfairly penalized if the examiner takes a long time to send the Advisory Action. The Drop Dead Date, however, is never extended past the six-month date from the mailing of the Final Office Action. Conversely, if the applicant does not respond to the Final Office Action (FOA) within two months from the mailing date, no Advisory Action will be sent, and the applicant's reply must either put the application in a condition for allowance or be a Notice of Appeal, or an RCE, etc. For example, assume that the FOA is mailed 08/01/16 and the response is filed 10/01/16. The Advisory Action is mailed 11/19/16. This makes the response to the Advisory Action due on the date it was mailed, on 11/19/16, so that if you file a response by 12/19/16, you need to send in only a one-month Extension of Time Fee. Now, say that a FOA is mailed 08/01/16, and the response is filed 10/01/16. In this case, the examiner is quick and mails an Advisory Action on 10/29/16. To avoid an extension of time, the response to the Advisory Action is due 11/01/16. Remember, the six-month date is the Drop Dead date and cannot be extended.


233

2. After-Final amendments Any amendment made after a final rejection or filed with a request for continued examination (RCE) must include editing markings showing the changes relative to the last entered amendment. No markings showing changes relative to any un-entered amendments should be included, and NEVER assume that an after-final amendment is entered. After-final amendments are NOT entered as a matter of right. See the section of the course on RCE practice for more discussion of after-final amendments. 3. Docketing after a Final Office Action When you receive a Final Office Action, you should docket the following dates: - the date the FOA was mailed, - the two-month response date (if you wish to receive the Advisory Action), - the three-, four-, and five-month response dates, - the six month Drop Dead date. If you receive an Advisory Action, you have three choices. The applicant may either -respond to the Advisory Action, -file a Notice of Appeal, or, -file a Request for Continued Examination (RCE). Unlike a regular Office Action, in which a Response resets the clock and puts the ball back in the court of the USPTO to issue another Office Action, with a Final Office Action, the patent clock will continue to run even when the response to the Final Office Action has been filed, until either a Notice of Allowance is received OR you file one of the following: - a Notice of Appeal, - an RCE, or - a Continuation, Divisional, or CIP application. Therefore, do not remove the six-month final response date (Drop Dead Date) from the docket. Of course, your attorney may choose to just answer the Final Office Action by the three- month due date, and often the attorney and the examiner are able to agree on allowable claims through a phone interview. In these cases, the examiner may enter amendments as agreed and send a Notice of Allowance and Issue Fee Due. After-final Responses are sometimes referred to as Rule 1.116 responses because they are governed by patent rule 37 CFR 1.116. Remember, you can obtain up to three months of extra time to file a response, but you must get an allowance or file an appeal or RCE by the six month date, or the application will become abandoned.


234

4. Finalizing a response to Final Office Action As with any Office Action, the packet to the USPTO should contain - Transmittal Fee Sheet (optional), - Response to Final Office Action (or advisory action), - Request for extension of time (if necessary), and - Any Fees due or deposit account authorization (for claim amendments, extensions of time, etc.). In the upper right corner of the Response include the following in red ink or highlighted, type:

After Final: Expedited Procedure - Group Art Unit 1234

Any responses to or after the Final Office Action, but before the Notice of Allowance, should be filed using EFS-Web, or it may be faxed to the USPTO central fax number (571) 273-8300), submitted by EFS-Web, or mailed to MAIL STOP AF, COMMISSIONER FOR PATENTS, ALEXANDRIA VA 22313. AF stands for After Final. 5. After Final Consideration Pilot (AFCP) There is one more after final option you should be aware of, the After Final Consideration Pilot program. This is a request by the applicant to the examiner to reconsider the final rejection in view of after-final amendments and arguments. It should be used only when the applicant is confident about the allowability of the amended claims. You need to file form PTO/SB/434 CERTIFICATION AND REQUEST FOR CONSIDERATION UNDER THE AFTER FINAL CONSIDERATION PILOT PROGRAM 2.0. The request must meet the following requirements: 1. The application must have an outstanding final rejection. 2. You must submit (or have submitted) a response to the outstanding final rejection; the response must include at least one amendment to at least one independent claim; and the amendment must not broaden the scope of the claim. 3. Applicant must be willing and available to participate in any interview requested by the examiner. 4. The request must be filed electronically. 5. Any fees required must be paid, e.g., extension of time fees. There is no additional fee required to request consideration under AFCP 2.0. This is a very useful program. It is free and quite often results in an agreement to allow claims.


235

Example: PTO/SB/434: CERTIFICATION AND REQUEST FOR CONSIDERATION UNDER THE AFTER FINAL CONSIDERATION PILOT PROGRAM 2.0

Ch.5/D: Abandonment Sometimes, the applicant will not be able to get any meaningful allowance and will decide to give up. In this case, the applicant may choose not to respond to the Office Action, and the application will automatically become abandoned after the six- month statutory period for reply. Soon thereafter, the applicant will receive a Notice of Abandonment from the USPTO. Alternatively, the applicant may expressly choose to abandon the application. Express abandonment may also be used to obtain a refund of search fees and excess claims fees in the application or to prevent publication.


236

In order to expressly abandon an application the applicant must send in one of the below forms or a written declaration of abandonment (under 37 CFR 1.138) signed by the applicant, assignee of record, or the attorney/agent of record. This declaration must include the serial number and filing date, and no fee is required with an express abandonment. The USPTO provides three forms to use for Express Abandonment in various circumstances:

� AIA/24 Express Abandonment Under 37 CFR 1.138 � AIA/24A Petition for Express Abandonment to Avoid Publication under 37 CFR

1.138(c) � AIA/24B Petition for Express Abandonment to Obtain a Refund

Requests for express abandonment may be filed using EFS-Web or mailed to Mail Stop Express Abandonment, COMMISSIONER OF PATENTS, P.O. BOX 1450, ALEXANDRIA VA 22313-1450. Moreover, the documents may be faxed to the USPTO or hand delivered to the Pre-Grant Publication Division. The fact that a request for express abandonment has been filed will not necessarily guarantee that the application will not be published, because the Notice of Abandonment may not reach the publication division in time to prevent publication. Ch.5/E: Revival of an Accidentally Abandoned Application Occasionally a patent application will inadvertently become abandoned, and the applicant will receive a Notice of Abandonment from the USPTO. This may happen, for example, because a reply to an Office Action was not submitted within the statutory period (six months from the date of mailing of the Office Action), or perhaps the application became abandoned for failure to pay the issue fee (discussed later). If an application becomes abandoned, it can usually be revived by filing a petition together with a fee and a response to the outstanding Office Action. A terminal disclaimer is sometimes (rarely) required, as well. (Revival of an issued patent is discussed in Chapter 12.) If your application has been accidently abandoned, do not worry. The revival process is very easy, and in some instances you get a decision immediately, online. It is important to understand that an application that is intentionally abandoned cannot, according to the rules, be revived. The abandonment must be unintentional. An application intentionally abandoned, for instance because the applicant believed that no meaningful claims would be allowed, cannot technically be revived (MPEP 711.03c C1). Occasionally, however, practitioners have been known to stretch the rules for an applicant who changes its mind and decides to revive an intentionally abandoned application. But any action that might be construed as a fraud on the patent office has potentially serious consequences, including invalidation of the issued patent.


237

There used to be an unavoidable reason for abandonment, which required you to swear to certain facts, however this rule no longer exists. Reviving an abandoned application is straightforward. You need to file a petition under 37 CFR 1.137(b) and pay the fee under 37 CFR 1.17(m). You also need to submit a bona-fide response to any outstanding Office Action, and you may have to file an RCE if the abandonment was after-final. Use form PTO/SB/64 to file the petition. In the petition, the applicant makes a signed statement saying that the entire delay in filing the required reply was unintentional. This statement is part of PTO/SB/64. The USPTO will generally accept this statement at its face value and they will revive the application. Note that if you have accidentally abandoned your application for failure to reply to a notice, and if the time to reply is more than six months from the mailing date of the notice, you do not have to pay extension of time fees to the six-month date to revive the application. You have to pay the revival fee under 37 CFR 1.17(m). However, if your application became abandoned for failure to properly respond to a Final Office Action, you will probably need to file an RCE (with fee) as well as a bona-fide response to the outstanding Office Action. Note that if you have abandoned an allowed application for failure to pay the issue fee on time, do NOT panic and try to pay the issue fee late. Instead, wait for the notice of abandonment and file an ePetition to Accept Late Payment of Issue Fee (37 CFR 1.137(a)) and pay the issue fee and the petition fee at that time. Do not try to pay the issue fee before the status of the application shows as Abandoned in PAIR and you receive the Notice of Abandonment. The rules do not allow it, and it will cause delays and confusion. If you revive by ePetition, petitioning for acceptance of late payment of an issue fee, you will get an automatic, instant decision. We show you how to file ePetitions later in the course.


238

Example: PTO/SB/64

There is no official time limit for when you can petition to revive an abandoned patent application. The USPTO looks at each case on its merits. If the delay has been more than a few years, however, the patent office may well require further proof that the delay was unintentional, or the petition may even be denied.


239

A terminal disclaimer (discussed elsewhere in this course) and a disclaimer fee (37 CFR 1.20d) will be required in the unlikely event that the application was filed before June 8, 1995. Such a terminal disclaimer will require that the applicant give up a period of the patent term equal to the period of the delay caused by the abandonment. If the application was filed on or after June 8, 1995, no terminal disclaimer is required. It is highly unlikely that you will ever come across such an old pending application, but some do still exist for strategic reasons. A response to any outstanding Office Action must accompany the petition to revive the application. But you do not have to pay extension of time fees to file the response, just the revival fee under 37 CFR 1.17(m). If the last Office Action was non-final, the applicant may submit a standard response in the usual way, along with the petition. Alternately, the applicant may file a Continuation application under 37 CFR 1.53(b) to restart or continue prosecution, respectively (see Chapter 6). If the Office Action was final, then the applicant must provide a response that satisfies the strict After-Final rules (see Ch.5/C). MPEP 711.03c states, “Generally, the required reply is the reply sufficient to have avoided abandonment, had such reply been timely filed. A petition for an extension of time under 37 CFR 1.136 and a fee for such an extension of time are not required to be included with the reply.” This means you do not have to pay the extension of time fees, just the petition fee. However, in practice, you will also need to file an RCE and pay the RCE fee in order to have the response considered and entered. If your application became abandoned for failure to reply to a Final Office Action, and you file a petition to revive but did not include all the elements necessary for a proper revival, (for example, you file a petition and a response, but do not file an RCE), then the USPTO will send you a notice giving you (usually) two months to file a Renewed Petition for Revival of Application under 37 CFR 1.137(b). The applicant may revive and respond to the outstanding Final Office Action by doing one of four things: 1) File a Notice of Appeal and appeal fee. 2) Amend the claims under 37 CFR 1.116, canceling non-allowable claims and amending remaining claims to make them allowable. 3) File an RCE (Request for Continued Examination) with appropriate fee, together with the required response to the outstanding Office Action. 4) File a Continuation under 37 CFR 1.53(b).


240

So, the parts required for submission to the USPTO to revive an abandoned patent application are: 1) a reply to outstanding Office Action and/or file RCE or Continuation or notice of appeal, 2) a petition to revive (PTO/SB/64) and fee, 3) a statement that the delay was unintentional (included in PTO/SB/64), and 4) a terminal disclaimer, if required. Typical problems found in petitions to revive The following items of text are taken from a USPTO publication listing some common errors made when filing a petition to revive an abandoned application. (1) The petitioner attributes fault for the delay in filing a reply to an employee such as a secretary, clerk or courier without submitting a statement from that person. (2) Petitions are not signed prior to being sent by facsimile transmission or other delivery means to the Office. (3) Petitioner intentionally delays the filing of a petition after first becoming aware of the abandonment. While questions are not normally raised when petitions under the unintentional standard are filed within one year of the date of abandonment, it is not appropriate to intentionally delay the filing of a petition after becoming aware of the abandoned status of the application. (4) Petitioner does not submit a proper reply to an outstanding Office Action with the petition. By way of example, amendments filed after a final rejection, do not constitute a proper reply if the examiner refuses to have the amendment entered due to non-compliance with 37 CFR 1.116. Unless an amendment filed after a final rejection clearly places the application in condition for allowance, it is recommended that the reply filed be a Notice of Appeal, a continuation, or an RCE. (5) The petitioner attempts to revive a provisional application beyond 12 months from filing. While the petition can be filed outside the 12-month period (usually for co-pendency), a provisional application can only be pending for a period of 12 months from filing. Note, however, you can file a nonprovisional and claim priority to a provisional within a 2-month window after the 1-year anniversary has elapsed by filing a petition to restore the benefit of a provisional application under 37 CFR 1.78. If filing a PCT application, you can restore priority under PCT Rule 26bis. Some things to remember when filing a petition to revive 1. If you do not submit a proper reply to an outstanding Office Action with the petition, then the petition will be denied and the application will not be revived. For example, amendments filed after a final rejection that do not clearly place the application in


241

condition for allowance will not be entered if no RCE is filed and your petition will be denied. 2. You cannot revive a provisional application beyond 12 months from filing. While you can revive a nonprovisional application, a provisional application can only be pending for a period of 12 months from filing. Note, however, you can file a nonprovisional and claim priority to a provisional within a 2-month window after the 1-year anniversary has elapsed by filing a petition to restore the benefit of a provisional application under 37 CFR 1.78. If filing a PCT application, you can restore priority under PCT Rule 26bis. 3. If your petition is denied, you can file a renewed petition to revive. A renewed petition to revive must be filed within two months of an adverse decision on the earlier petition to revive to be considered timely, unless a proper extension of time up to an additional five months (for a total of seven months) is obtained under 37 CFR 1.136(a). 4. A petition under 37 CFR 1.137(a) must be accompanied by the petition fee set forth in 37 CFR 1.17(l), and a petition under 37 CFR 1.137 (b) must be accompanied by the petition fee set forth in 37 CFR 1.17(m). The petition fee is required by statute. See 35 USC 41(a)(7). Thus, the Office cannot grant requests for waiver or reduction of the requisite petition fee. 5. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. 6. In an application abandoned for failure to pay the issue fee or any portion thereof, the required reply must be the payment of the issue fee or any outstanding balance thereof, even if the application is to then be abandoned in favor of a continuing application. In a patent lapsed for failure to pay the balance of issue fee due, the required reply is payment of the balance of issue fee due. 7. In a provisional application abandoned for failure to timely comply with an Office requirement, the reply requirement must be met by a complete reply to such Office requirement. 8. 37 CFR 1.137(b) is applicable to applications abandoned and patents lapsed, regardless of the length of time that the application was abandoned or the patent was lapsed. However, note that 37 CFR 1.137(b) requires that the entire period of delay, from the due date of the reply to the date of filing a grantable petition to revive, was unintentional for a petition under 37 CFR 1.137(b) to be granted. 9. While a statement of unintentional delay for the entire period of abandonment is generally sufficient, 37 CFR 1.137(b) authorizes the Office to require additional information when there is a question whether the entire delay was unintentional. In such instances, the Office may require evidence for each of the three critical periods: (1) the delay in filing a timely reply before abandonment of the application or lapse of the

http://www.uspto.gov/web/offices/pac/mpep/index.html




242

patent; (2) the delay in filing an initial petition to revive; and (3) the delay in filing a grantable petition to revive. 10. An applicant who deliberately delays the filing of a petition under 37 CFR 1.137 will not be able to show that, “the entire delay in filing the required reply from the due date of the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional.” 11. Examples of situations where unintentional delay was argued but the Office held these activities to constitute intentional delay: (A) where the applicant deliberately permits an application to become abandoned (due to a conclusion that the claims are unpatentable, that a rejection in an Office Action cannot be overcome, or that an invention lacks sufficient commercial value to justify continued prosecution);

(B) where the applicant chooses not to seek or persist in seeking revival of an abandoned application, or where the applicant deliberately chooses to delay revival of an abandoned application.

12. An intentional delay resulting from a deliberate course of action chosen by the applicant is not affected by (a) the correctness of the applicant (or applicant's representative) decision to abandon the application or not to seek or persist in seeking revival of the application; (b) the correctness or propriety of a rejection, or other objection, requirement, or decision by the Office; or (c) the discovery of new information or evidence or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival. 13. An intentional abandonment of an application or an intentional delay in seeking either the withdrawal of a holding of abandonment in, or the revival of, an abandoned application, precludes a finding of unintentional delay pursuant to 37 CFR 1.137. 14. Where an applicant chooses not to seek revival of an application or chooses not to persist in seeking revival after an adverse decision on an earlier petition, the resulting delay cannot be considered to be unintentional. 15. A provisional application cannot be revived beyond the date that is 12 months from the date of filing. On the 12-month date the provisional lapses and there is nothing anyone can do about it. But note that you can restore priority to a provisional within a 2-month window after the 1-year anniversary has elapsed by filing a petition to restore the benefit of a provisional application under 37 CFR 1.78.


243

Sending the petition to the USPTO The Petition to Revive, with all the required documents and the fee, should be transmitted to the USPTO using the EFS-Web system (see section on ePetitions). Petitions can be filed using EFS-Web. An automatic decision for some common petitions can be obtained almost instantly. Alternatively, the petition can be faxed to the USPTO central fax number – (571) 273-8300, or mailed to MAIL STOP PETITION, COMMISSIONER FOR PATENTS, P.O. BOX 1450 ALEXANDRIA, VA 22313.

Decision on Petition The USPTO will send you a DECISION ON PETITION showing that the petition is either Granted or Denied. If you filed an ePetition then the decision will be instantaneous. If an ePetition was not available and you filed using the method, processing of the petition may take months and you will receive the notice via PAIR in the usual way.


244

Example: DECISION ON PETITION (using ePetition) – GRANTED

Ch.5/F: Petition to Withdraw a Holding of Abandonment What can you do if you get a Notice of Abandonment that you believe is in error? Here, revival is not appropriate, because the applicant contends that the application is not, in fact, abandoned. You should file a Petition to Withdraw a Holding of Abandonment under 37 CFR 1.181(a). No fee is required.


245

This petition should be filed with the USPTO within two months of the mailing date of the Notice of Abandonment. If not filed within this two-month window, the petition may be dismissed as untimely. Nevertheless, this is not a strict rule, and the patent office may still decide to consider the petition. If the Office does decide to consider an untimely filed petition, it will do so only if a Terminal Disclaimer is filed. If the application was filed before June 8, 1995, the terminal disclaimer must disclaim the terminal (end) part of the patent term equal to the period between the date of mailing of the Notice of Abandonment and the filing date of the Petition to Withdraw a Holding of Abandonment. If the application was filed on or after June 8, 1995, the terminal disclaimer must disclaim the terminal part of the patent term such that any patent granted on the application would not extend beyond 20 years from the date of filing. As with other petitions, the Petition to Withdraw a Holding of Abandonment should be filed using EFS-Web, faxed to the USPTO central fax number – (571) 273-8300--or mailed to MAIL STOP PETITION, COMMISSIONER FOR PATENTS, P.O. BOX 1450 ALEXANDRIA, VA 22313. Ch.5/G: Petitions and ePetitions Petitions to the Commissioner are requests from the patent applicant to the Commissioner to take some discretionary action. Petitions are filed for many purposes and are mentioned as appropriate throughout this course. Petitions can be filed using EFS-Web. An automatic decision for some common petitions can be obtained almost instantly. The patent office has created a set of automated online forms for submitting many common types of petitions through its new ePetition system. The selected petitions are decided automatically and immediately and entered into the file history. The ePetition information can be entered directly into EFS-Web screens. The .pdf petition form is not required for these ePetitions. Web-Based ePetitions are available for: (1) Request for Withdrawal as Attorney or Agent of Record (37 CFR 1.36), (2) Petitions to Withdraw from Issue after Payment of the Issue Fee, and (3) Petitions for Revival:

- Petition for Revival of an Abandoned Patent Application Abandoned Unintentionally (37 CFR 1.137(a)) for cases abandoned after the first Office Action and prior to Notice of Allowance* - Petition to Accept Late Payment of Issue Fee – Unintentional. - Petition for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing.


246

- Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(a)). - Petition to Correct Assignee After Payment of Issue Fee (37 CFR 3.81(b)). - Petition to Accept Unintentional Delayed Payment of the Maintenance Fee.

* ePetition Filing Requirements for Petition for Revival of an Abandoned Patent Application Abandoned Unintentionally (37 CFR 1.137(a)) – For Cases Abandoned After 1st Action and Prior to Notice of Allowance. To use this ePetition, you must have received the first Office Action on the merits and you must have received a Notice of Abandonment. You cannot use this ePetition before the Notice of Abandonment has been issued, and you cannot use it if the application has become abandoned for failure to reply to a Notice to File Missing Parts, or other formalities notice. You can use it to revive for failure to respond (or adequately respond) to a non-final or a Final Office Action, but you will need to file an RCE or continuation with the bona fide response to the Final Office Action. If the application has been abandoned for more than three years, you cannot use this ePetition. The USPTO lists the requirements as follows:

(a) The user must enter a valid US application number (b) The US application number cannot be for a provisional, design, re-exam, or plant

application (c) The US application number entered may not be an issued patent (d) A Notice of Abandonment must have been mailed by the Office (e) The abandonment date must be less than two years prior to the petition (f) After Final Rejection amendments may not be filed (g) If the filer has a POA, a valid Registration Number must be entered (h) The ePetition may not be filed if the application is after Notice of Allowance

The USPTO provides a very useful guide to ePetition practice found at: https://www.uspto.gov/sites/default/files/patents/process/file/efs/guidance/epetition-quickstart.pdf Note that at the time of this writing the EFS-Web system states that ePetition usage is unavailable for any petition involving the payment of Micro Entity fees. Specifically, the website says

However, we are not convinced that this is strictly correct, and it seems that Micro fees are available as options in the various ePetition online forms. We have not been able to get a definitive answer from the USPTO, so if this notice still appears when you are filing an ePetition, we suggest you call the petitions branch to clarify the rules. The other thing

https://www.uspto.gov/sites/default/files/patents/process/file/efs/guidance/epetition-quickstart.pdf

https://www.uspto.gov/sites/default/files/patents/process/file/efs/guidance/epetition-quickstart.pdf


247

you may be able to do is to change the entity status of the application and pay a Small Entity fee with your ePetition. We know that this has worked in the past for revival of an application for a petition for late payment of an issue fee. Filing petitions online is easy and efficient. Just log in to EFS-Web and select Existing application and ePetition. Some petitions need to be downloaded to be completed; others can be completed online. Complete the petition, pay the required fee, and submit through EFS-Web in the usual manner. At the end, as usual, an electronic acknowledgement will be provided for you to download. If the ePetition is one with automatic processing (e.g., ePetition to Accept Late Payment of Issue Fee), you will receive a petition decision immediately.

You will be presented with two sets of ePetitions: .pdf-based petitions and web-based petitions. For .pdf-based petitions you need to download and complete the respective EFS-Web fillable .pdf form and file it using this ePetition submission system. For web-based ePetitions you will enter information directly into EFS-Web screens. For a petition to make special based on age, the screen will look like this, and you need to enter the application number and confirmation number.


248

For a petition to accept an unintentional delayed payment of the maintenance fee, the screen will look like this, and you need to enter the application number and patent number.

The web-based ePetitions include petitions for withdrawal as attorney of record, petition to withdraw application from issue after payment of the issue fee, petition to correct assignee after payment of issue fee, and, importantly, petitions to revive abandoned applications, inlcuding revival of an application abandoned unintentionally, which looks like this:

All the petitions are self-explanatory. Follow the instructions, complete the petition, pay the required fee, and submit through EFS-Web. At the end, save a copy of the electronic acknowledgement for your records.


249

Example: Petition for Revival of an Abandoned Patent Application Abandoned Unintentionally (37 CFR 1.137(a)) (for cases abandoned after 1st Office Action and prior to Notice of Allowance). To use this ePetition, you must have received the first Office Action on the merits and you must have received a Notice of Abandonment. You cannot use this ePetition before the Notice of Abandonment has been issued, and you cannot use it if the application has become abandoned for failure to reply to a Notice of File Missing Parts or other formalities notice. You can use it to revive for failure to respond (or adequately respond) to a non-final or a Final Office Action, but you will need to file an RCE or continuation with the bona-fide response to the Final Office Action. You cannot request an After Final amendment. (1) Select Existing application then ePetition

(2) Under Web-based ePetitions select Petitions for Revival then Petition of an Abandoned Application, etc.


250

(3) Fill in the information for the application number and the attorney information

(4) Check the fee entity status, the type of reply, and fill in the certification


251

(5) Attach the response and any other required documents

(6) Check the fee (Note, there is a Small Entity discount, but no Micro Entity discount)

(7) Submit the petition and pay using the USPTO Financial Manager system


252

Request for Withdrawal as Attorney or Agent of Record. This is needed when your firm has to drop a case, such as when the client has stopped paying the bills. Under the ethics rules, firms/attorneys are not allowed to stop supporting the case; rather, they need permission from the USPTO. If you forget to do this, the firm may continue to be liable for responses and fees. The screen-shots are small, so enlarge them on the screen if you have difficulty reading them. (1) Select ePetition. (2) Select Request for Withdrawal as Attorney or Agent of Record. (3) Fill in the fields for application number, confirmation number, name, and registration number.

(4) On the next page you have to select the reason for withdrawal and check the boxes showing that you have complied with the rules for withdrawal by giving the client adequate notice, etc.


253

(5) Then you have to fill in the new correspondence address for the case.

(6) Lastly (not shown), you must e-sign and submit the petition. (7) You will instantly be able to download the receipt and the decision.


254

Granted Request for Withdrawal as Attorney or Agent of Record


255

Example: Automatically granted Petition to Accept Late Payment of Issue Fee - Unintentional Late Payment (37 CFR 1.137(a)).


256

Ch. 5/H: Publication All patent applications filed on or after November 29, 2000, will be published promptly after 18 months have elapsed from earliest priority date (domestic or foreign) of the application. The exceptions to this rule are that an application shall not be published if (a) It is no longer pending at the 18-month date (for information on express abandonment to avoid publication see 37 CFR 1.138(c) and MPEP § 1125). (b) The application has issued as a patent in sufficient time to be removed from the publication process. (c) It is a provisional application that has not been converted to a nonprovisional application. (d) It is a design patent application (35 USC chapter 16). (e) It is subject to a secrecy order (35 USC section 181). (f) The application was filed with a non-publication request in compliance with 37 CFR section 1.213(a). If a provisional application was filed, this 18-month date starts running on the provisional filing date. (Remember that the patent term starts running from the filing date of the nonprovisional. Beware of this; it is easy to get confused.) A provisional application that is allowed to lapse without ever being converted into a nonprovisional application will not be published. Applicants will be informed of the projected publication date assigned to the application on the filing receipt. The status of any non-publication request or early publication request is also shown on the filing receipt. Later, closer to the date of publication, the applicant will receive a Notice of Publication of Application, giving the publication date and publication number for the application. Patent application publications will have a similar appearance to a US patent. Patent application publications will be assigned a unique number, followed by A1 (priority date before January 2, 2001) or B1 (priority date after January 2, 2001). Applications are published in electronic format on the USPTO website (http://www.uspto.gov/). When viewing the website, you will be given the option of searching published applications or issued patents. You cannot search both databases simultaneously. Copies of patent application publications will not be mailed to the applicant. In addition, upon publication, any member of the public will be able to obtain a copy of the file history (the file wrapper) of a published application. It is interesting to note that if a provisional application was filed, both the provisional and nonprovisional applications are published on the PAIR system of the USPTO website, and both become public. Provisional applications are often filed in a hurry and quite often contain pages of notebooks and other papers which sometimes include handwritten

http://www.uspto.gov/


257

informal comments and personal information, sometimes even information prejudicial to the application. Continuation, Divisional, and CIP applications should publish relatively soon after filing because their earliest priority date is that of the parent application. Sometimes the filing date of an application may already be more than 18 months after the earliest filing date, in which case the application will be published as soon as possible after filing. Generally, the application as published will be identical to the application as filed, without the entry of any amendments. The applicant, however, can request that the published copy of the application contain the amendments made during prosecution. For this to be done, the applicant must submit a copy of the application as amended using the USPTO‟s Electronic Filing System (EFS-Web), discussed later in this course. The amended copy must be submitted either within one month of the actual filing date of the application (for preliminary amendments) or within 14 months of the earliest filing date, whichever is later. Even if the applicant misses this 14-month deadline, the USPTO may, at its discretion, accept an untimely filed amended text, so long as the publication process has not advanced past the point at which further changes cannot be made. You will find the rules for amended publication at 37 CFR 1.215 (c)-(d). Provisional rights are available to the patent holder if others make, use, sell, or import the invention during the period between publication and grant. These provisional rights generally consist of a reasonable royalty to be paid to the patent holder by the infringer. Yet, such provisional rights may be enforced only after the patent issues, and only to the degree that the issued patent contains claims that are substantially similar or identical to those in the published application. Remember, you can only infringe a patent; you cannot infringe a patent application. The applicant may request that the application be published early. The applicant must submit a request in compliance with 37 CFR 1.219. The fee which was once collected was eliminated on January 1, 2014. The Office will publish the application as soon as possible if the application is otherwise ready for publication. The publication process takes approximately 14 weeks and does not begin until the application is complete and ready for publication. To be ready for publication, an executed oath or declaration must have been filed. See MPEP § 1120. Early publication is usually done for the purpose of creating a published prior art record to prevent others from filing a similar application. The application will automatically be published unless the applicant specifically requests that it not be published. This non-publication request must be made at the time of filing, and the applicant must certify that the invention has not and will not be the subject of an application filed in a foreign country, preventing the application from ever being filed abroad (e.g., PCT). The non-publication request may be withdrawn at any time if the application is filed in another country that requires 18-month publication. The applicant must notify the USPTO within 45 days of foreign filing, or the application will become abandoned


258

without notice once the foreign application has been filed. If a patent application is abandoned for failure to notify the USPTO of a foreign filing, the application may be revived under 37 CFR 1.137(f) using Form PTO/6B/64a Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing. You will also need to submit a petition fee under 37 CFR 1.16(m), which is quite expensive. An applicant may choose to abandon an application before the 18-month date in order to prevent publication. This is done by filing form PTO/AIA/24A – see below. Unless an applicant has received a notice of abandonment at least four weeks prior to the projected publication date, an applicant who wants to abandon the application to avoid publication must file a petition under 37 CFR 1.138(c) to expressly abandon the application and avoid publication. See MPEP § 1125. An applicant who seeks to avoid publication by permitting an application to become abandoned (for failure to reply to an Office Action) and passively waiting for the Office to recognize that the application has become abandoned bears the risk that the Office will not recognize that the application has become abandoned in sufficient time to avoid publication.


259

Form PTO/AIA/24A – Express Abandonment to Avoid Publication


260

Ch.5/I: Third Party Pre‐Issuance Submissions under the AIA Rules The Leahy-Smith America Invents Act (AIA) authorizes Third Party Pre‐Issuance Submissions. See Sec. 8 of the AIA and new 37 CFR 1.290. This enables a party who is not the applicant to submit what it believes to be patents and publications which may cause difficulty during prosecution or even prevent patent allowance. During prosecution, any third party may submit any patent, patent application, or printed publication, accompanied by a concise statement of relevance. Naturally, a fee is also required. The submission must be made before a Notice of Allowance is issued, and no later than either six months after official publication (under section 122) or the date of the first rejection of any claim by the patent examiner, whichever is later. The third party can make the submission anonymously. See 37 CFR 1.501(d). This is clearly a very powerful tool and makes monitoring of competitors potentially very important. The process is inexpensive, and it can be done anonymously. Any patents, published patent applications, or other printed publications of potential relevance to the examination of the application may be submitted. A third-party submission may be made in any nonprovisional utility, design, or plant application. To make third-party submissions under 37 CFR 1.290, use form PTO/SB/429 (below). A pre-issuance submission must contain: - a completed form PTO/SB/429, - a list of items being submitted, - a concise description of the relevance of each item listed, - a legible copy of each non-US patent document listed, - an English language translation of any non-English language item listed, - a statement by the party making the submission that the submission complies with the statute and the rule, and - the required fee under 37 CFR 1.17(p). At the time of this writing, the fee is $180 for every ten documents, or fraction thereof, listed in each third-party submission. An exemption from this fee is provided when a third-party submission lists three or fewer total documents and is the first third-party submission by the third-party. You can make a third-party submissions under 37 CFR 1.290 on paper, by mail, or using form PTO/SB/429, shown below. More often you will be submitting a third-party submission online. The USPTO has created a separate web-based interface for third-party submissions under new 37 CFR 1.290 that fill in to automatically generate the PTO/SB/429 form. You can access the system via EFS-Web.


261

Log in to the EFS-Web system. When selecting the application type, click on Existing application/proceeding and select Third-Party Pre-issuance Submission under 37 CFR 1.290. Fill in boxes for the application number and the confirmation number. Check the box below certifying that all statements are true, and read the warning about fees. (Enlarge the images below to view).

You will be taken to a new screen into which you enter all the references to be submitted. There are separate sections for US patents, US patent application publications, foreign patents, published foreign patent applications, and non-patent publications. Enter each item to be listed (US patent, US patent application publication, foreign patent, published foreign patent application, or non-patent publication) in the designated fields. As you fill out the web-form, a completed form PTO/SB/429 will be automatically generated, which can be reviewed on the Review Document's screen by clicking on the Third-party-preissuance-submission.pdf document. A total of 10 items may be listed per electronic submission. You need to make a new submission to add additional items over 10. Below are the fields you will need to fill in (enlarge to view).


262


263

After you have listed all the documents to be submitted, check the box to enter your e-mail address to request notification of non-compliance. This is very important, because if the submission is not compliant you will wish to be notified immediately by email. Select the correct fee button. There is no fee if three or fewer items are submitted. Now e-sign the form, review the completed forms and documents, submit it, and pay the fee. Save the electronic Acknowledgement for your records. There is no limit to the number of submissions you can make, but the USPTO does seem to suggest that a smaller number will prove more effective because the examiner will be able to give them adequate consideration. If the submission is not compliant you will be notified (by email) and given an opportunity to correct the submission.


264

Example: form PTO/SB/429 (page 1of 2)


265

Example: form PTO/SB/429 (page 2 of 2)

GO TO CHAPTER QUIZ

http://www.iplegaled.com/