Implementation Perspective of the USPTO on the “American Inventors Protection Act of 1999” (P.L. 106-113); and the changes to implement the Patent Business

Implementation Perspective of the USPTO on the

“American Inventors Protection Act of 1999” (P.L. 106-113); and the changes to implement the Patent Business Goals

27 Sept. 2000

Bob Spar, Director / Karin Tyson, Senior Legal Advisor Office of Patent Legal Administration, USPTO

(703) 308-5107 / (703) 306-3159 [email protected] / [email protected]

2

“American Inventors Protection Act of 1999” AIPA Webpage (slides 4-5) Inventor’s Rights - Subtitle A: Interim Rule: 65 Fed. Reg. 3127 (Jan. 20, 2000), 1231 Off. Gaz.

Pat. Office 37 (Feb. 8, 2000). (slide 6) Patent and Trademark Fee Fairness - Subtitle B: 64 Fed. Reg. 67774 (Dec. 3, 1999), 1229

Off. Gaz. Pat. Office 38 (Dec. 14, 1999). (slide 7) First Inventor’s Defense (No Rule package) - Subtitle C Patent Term Guarantee - Subtitle D: Proposed Rule: 65 Fed. Reg. 17215 (March 31, 2000),

1233 Off. Gaz. Pat. Office 109 (Apr. 25, 2000). Final Rule: 65 Fed. Reg. 56365 (Sept. 18, 2000), (slides 8-34)

Requests for Continued Examination (RCE), - Subtitle D : Interim Rule: 65 Fed. Reg. 14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000); Final Rule: 65 Fed. Reg. 50092 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000), (slides 35-57) (PTO Form - PTO/SB/30)

Domestic Publication of Patent Applications Filed Abroad - Subtitle E : Proposed Rule: 65 Fed. Reg. 17946 (Apr. 5, 2000), 1233 Off. Gaz. Pat. Office 121 (Apr. 25, 2000). Final Rule 65 Fed. Reg. 57023 (Sept. 20, 2000), (slides 58-88)

Optional Inter Partes Reexamination - Subtitle F : Proposed Rule: 65 Fed. Reg. 18154 (Apr. 6, 2000), 1234 Off. Gaz. Pat. Office 93 (May 23, 2000). (Slides 89-113)

Patent and Trademark Office - Subtitle G: Notice: 65 Fed. Reg. 17858 (April 5, 2000) 1234 Off. Gaz. Pat. Office 41 (May 9, 2000)

3

“American Inventors Protection Act of 1999” (cont.)

Miscellaneous Patent Provisions - Subtitle H Official Gazette Notice Addresses 102(g) and 103(c) and defining

“original application”- 1233 Off. Gaz. Pat. Office 54 (April 11, 2000 ) - (slides 114-116)

PTO Now accepts Credit Cards for Patent and Trademark Fees- Final Rule: 65 Fed. Reg. 33452 (May 24, 2000), 1235 Off. Gaz. Pat. Office 38 (June 13, 2000) PTO form PTO-2038

Patent Business Goals - Proposed Rule: 64 Fed. Reg. 53772 (Oct. 4, 1999), 1228 Off. Gaz. Pat. Office 15 (November 2, 1999); Final Rule 65 Fed. Reg. 54603 (September 8, 2000) - slides 117-158

Information Contacts (slide 159-162)

4

AIPA WebpageHow do I get there?

Click on:American InventorsProtection Act

Go to: www.uspto.gov

http://www.uspto.gov

5

AIPA Webpage

6

Implementation of Subtitle A -Inventor’s Rights

Interim (Final) Rule effective January 28, 2000, was published January 20, 2000. 65 FR 3127– Copy available at www.uspto.gov in the American Inventor Protection Act

(AIPA) home page.

– An opportunity for response is given to the alleged promoter.

– USPTO will publish complaint (with any response) either in the OG or electronically at www.uspto.gov.

– Rules define what conduct is “Invention Promotion Services” and who is an “Invention Promoter”, which may include registered practitioners.

– Questions concerning complaints on invention promoters should be directed to the Office of Independent Inventor Programs (OIIP) ((703) 306-5568). Information on the web on OIIP is available at www.uspto.gov click on Independent Inventor Resources.

7

Implementation of Subtitle B - Patent and Trademark Fee Fairness

Final Rule effective December 29, 1999, (for patent fees) was published December 3, 1999. 64 FR 67774– Copy available at www.uspto.gov in the American Inventor

Protection Act (AIPA) home page.

– Patent fees were reduced by Statute, effective December 29, 1999, however the reduction for §§ 1.129(a) and (b) fees was effective January 3, 2000.

– Trademark fees were raised by Rule, effective January 3, 2000.

– Patent basic filing fee reduced from $760 / $380 to $690 / $345.– First maintenance fee for patents reduced from $940 / $470

to $830 / $415.

8

Patent Term Adjustment provisions of the

“American Inventors Protection Act of 1999” (P.L. 106-113)

Slides 8 - 34

9

Patent Term Adjustment (PTA) Effective May 29, 2000 Final Rule, 65 FR 56365 (Sept. 18, 2000); Notice of Proposed

Rulemaking, 65 FR 17215 (March 31, 2000). Copies available at www.uspto.gov in the American Inventor Protection Act (AIPA) home page. Applies to utility and plant applications filed on or after May 29, 2000

The patent term extension provisions of Public Law 103-465 (URAA) will continue to apply to utility and plant applications filed before May 29, 2000 but on or after June 8, 1995

Patent term adjustment or extension under 35 U.S.C. § 154(b) does not apply to design applications

Since June 8, 1995, patent term runs 20-years from the earliest effective filing date (including claims under 35 USC 120 and 365(c)) with (as of May 29, 2000) new possible positive PTA due to Office delays

10

PTA: CPA Eligibility

A continued prosecution application (CPA) under 37 CFR 1.53(d) is a new continuing application– Filing a CPA on or after May 29, 2000 in an application

filed before May 29, 2000 causes application (CPA) to be eligible for patent term adjustment under the “American Inventors Protection Act of 1999”

11

PTA: RCE Eligibility

A request for continued examination (RCE) is not a new application

– Filing a RCE on/after May 29, 2000 in an application filed before May 29, 2000 does not cause that application to be eligible for patent term adjustment under the “American Inventors Protection Act of 1999”

12

Patent Term Adjustment: Bases Provides three (3) bases for adjustment:

(1) USPTO failure to take certain actions within specified time frames (35 U.S.C. § 154(b)(1)(A)),

(2) USPTO failure to issue a patent within three years of the actual filing date 35 U.S.C. § 154(b)(1)(B)), and

(3) Delays due to interference, secrecy order, or successful appellate review (35 U.S.C. § 154(b)(1)(C))

Provides day-for-day adjustment for each failure or delay resulting in adjustment

13

PTA: Failure of USPTO to take certain actions within specified time frames (1st basis)

USPTO obligation to initially act on the application within fourteen (14) months after filing or national stage entry date - met by– first Office action on the merits, including Ex parte Quayle action– notice of allowability– written restriction requirement– examiner’s requirement for information under 1.105.

Obligation to act on a reply or appeal within four (4) months starts – when appeal taken, when brief and fee received (not C of M date)

To act on an application within four (4) months after a BPAI or court decision where allowable claims remain in the application

To issue the patent within four (4) months of the date the issue fee was paid and all outstanding requirements were satisfied

14

PTA: USPTO failure to issue a patent within three years of the actual filing date (2nd basis)

The following periods are not counted against the three years-– time consumed by continued examination under 35

U.S.C. § 132(b) (RCE)

– time consumed by secrecy order, interference, or appellate review

– time consumed by applicant requested delays

15

PTA: Delays due to interference, secrecy order, or successful appellate review (3rd basis)

Delays caused by an interference proceeding (35 U.S.C. § 135(a))

Delays caused by imposition of a secrecy order (35 U.S.C. § 181)

Delays caused by appellate review in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability

— Note: a final decision reversing ALL rejections of at least one claim is required

— An allowance after a remand is not a final decision

The above-three delays are the bases for patent term extension under Public Law 103-465 (URAA)

16

PTA: Limitations on (patent term) adjustments (as to all three bases)

No double counting of overlapping delays

No adjustment beyond any date specified in a terminal disclaimer

Reduction of adjustment for period during which applicant failed to engage in reasonable efforts to conclude processing or examination of an application (to be defined by regulation)– The reductions offset or reduce any of the 3 bases for

PTA – PTA, however, may not be negative

17

PTA: Five changes from proposed rules “Reductions” related to missing parts practice and entry into the

national stage as to the United States have not been adopted in the final rules. – Proposed §§ 1.704(c)(6) (reductions for missing parts practice), and

1.704(c)(9) (reductions for certain informalities) were not adopted in final rule.

The Office will continue to give a two month period in a notice to file missing parts during which an applicant must complete the application, a similar notice will be given for informal papers.

Any time taken in excess of three months will be considered a “failure to engage in reasonable efforts to conclude processing or examination of the application” (Failure), and will result in a reduction.

Thus, the (2) proposed reductions have been dropped.

18

PTA: Five changes from proposed rules Proposed §§ 1.704(c)(7), and 1.704(c)(8) have not been adopted

in final rule.– Section 1.704(c)(7) proposed that the failure to fulfill the requirements of

35 U.S.C. 371(c) and § 1.494 or § 1.495 and § 1.704(c)(8) proposed that the failure to request national stage processing would be considered a Failure and would result in a reduction starting from the 35 U.S.C. 363 date and ending on the date the application fulfilled the requirements of 35 U.S.C. 371(c) or a request for processing was received (or the period expired).

The Office has defined the term “actual filing date of the application in the United States,” for purposes of an international application in 35 U.S.C. 154(b)(1)(B), to mean the date of commencement of the national stage as to the United States.

– Thus, the (2) proposed reductions have been dropped

19

PTA: Five changes from proposed rules Proposed §1.704(c)(13) has not been adopted in final rule.

– Section 1.704(c)(13) proposed that the failure to file an appeal brief (and appeal fee) in compliance with 1.192 with a notice of appeal would be considered a Failure and would result in a reduction starting on date a notice of appeal was filed and ending when the proper brief was filed.

The Office has defined the term “the date on which” . . . an “appeal was taken” to mean the date an appeal brief in compliance with 37 CFR 1.192 was filed.

– Thus, the proposed reduction has been dropped

20

PTA: Reduction of (patent term) adjustments (as to all 3 bases)

Failure to engage in reasonable efforts to conclude processing or examination of an application includes any of the following:

– Suspension of action or requesting deferral of issue

– Abandonment of application or failure to timely request withdrawal of a holding of abandonment

– Conversion of provisional to non-provisional

21

PTA: Reduction of (patent term) adjustments (as to all 3 bases) (cont.)

Failure to engage in reasonable efforts to conclude processing or examination of an application also includes any of the following: (cont.)

– Submitting preliminary amendments or other papers requiring re-mailing of actions

– Submitting replies that are not complete

– Submitting supplemental replies

– Submitting amendments or other papers after the notice of allowance

22

PTA: Reduction of (patent term) adjustments (as to all 3 bases) (cont.)

Failure to engage in reasonable efforts to conclude processing or examination of an application also includes any of the following: (cont.)

– Submission of amendment or other paper to reopen prosecution after BPAI or court decision

– Failure to reply to any USPTO action within three months of the action

receipt in Office tolls applicant period (not C of M date)– Continued prosecution via a continuing application,

no entitlement to any PTA accumulated in any prior application of the continuing application.

23

PTA: RCE vs. CPA

RCE - Filing a RCE (in an application filed on/after May 29, 2000) cuts off any additional PTA due to failure to issue a patent within three years of the actual filing date (basis 2), but does not otherwise affect PTA accumulated in the prior prosecution or earned in the RCE prosecution (bases 1 and 3)

CPA - PTA for a patent issuing on a CPA is only accrued from the filing of the CPA, all PTA accumulated during the pendency of a prior application, if any, is lost

24

PTA: Rulemaking

Final Rulemaking to implement term adjustment provisions was published on September 18, 2000 (65 Fed. Reg. 56365).

While the term adjustment provisions are effective on May 29, 2000, no patent eligible for adjustment is likely to issue before 2001

The notice of proposed rulemaking (published 3/31/00) placed public on notice as to the activities that will result in a reduction of adjustment

25

PTA: Notice and Reconsideration

USPTO shall make a determination of adjustment and include it with the notice of allowance

Applicant will be provided with one opportunity to request reconsideration of the USPTO’s determination

USPTO to issue patent after completing its determination (judicial review does not delay patent grant)

26

PTA Example Papers: Application filed May 29, 2000 First action January 29, 2001 Reply May 29, 2001 Final rejection August 29, 2001 Notice of appeal November 29, 2001 Appeal brief January 29, 2002 Examiner’s answer July 29, 2002 BPAI decision (reversal) November 29, 2003 Notice of allowance December 29, 2003 Issue fee paid March 29, 2004 Patent grant June 29, 2004

27

PTA Example Adjustment (positive):

– 14/4/4/460 days (2 months) (between May 29, 2002 and July 29, 2002)*

– 3-year No adjustment (appeal time not included)– Interference No adjustment– Secrecy order No adjustment– Appeal 731 days (24 months)

(between November 29, 2001 and November 29, 2003)* * periods overlap, total adjustment (positive) = 731 days (24

months) Reductions

– Reply outside 3 months 30 days (1 month) (between April 29, 2001 and May 29, 2001)

Patent term adjustment = 701 days (23 months)

28

Initial Determination of PTA

(Attachment to Notice of Allowance)

29

PTA: Procedures for initial determination of adjustment provided with the

Notice of Allowance PALM to track events giving rise to adjustments and

reductions Applicants can check the PALM data concerning these

events via PAIR (Patent Application Information Retrieval)

PALM will calculate adjustment at time of allowance based upon projected issue date and include determination with the notice of allowance

30

Interfaces

http://pair-direct.uspto.gov/cgi-bin/final/filehist.pl

File Content Screen

Application Number entry screen

PAIR review of PTA

calculation:

Patent Term Adjustment (PTA)

32

PTA: Window of time for Requesting Reconsideration of Initial PTA Determination

Issue fee payment ends period for filing:– Reconsideration requests (for allegedly miscalculated

PTA) with $200 fee, and/or

– Due care showings (to request reinstatement of period reduced due to failure to reply to any USPTO action within three months by showing that such failure occurred “in spite of all due care”) with $400 fee (a change from the proposed rule’s $450 fee).

33

Final Patent Term Adjustment Determination Procedures for determining final adjustment:

– Two weeks prior to issue, PALM will make a final calculation of adjustment when the patent number and issued date is assigned, Issue Notification sent to applicant will include this information

– Patent will include the USPTO’s final adjustment determination; a 30 day period is provided after the patent issue date for patentee to request reconsideration of PTA attributed to an error in predicting the issue date

– Applicant has 180 days from patent grant to seek judicial review of the USPTO’s adjustment determination

– No third party challenge to USPTO determination prior to patent grant

34

PTA: Impact on Patent Practice

Applicants need to review initial determination of PTA calculation on notice of allowance, relying on usage of PAIR, and make decisions before payment of the issue fee about:– filing request for reconsideration of PTA calculation,

and/or– submission of due care showing

Applicants need to review final adjustment determination on patent and decide whether to take further action

35

Continued Examination and Provisional Application Practice Changes of the

“American Inventors Protection Act of 1999”

Slides 35-56(P.L. 106-113)

36

Request for Continued Examination (RCE) Effective May 29, 2000

Final Rule, 65 FR 50092 (August 16, 2000) - Interim Rule, 65 FR 14865 (March 20, 2000). Copies available at www.uspto.gov in the American Inventor Protection Act (AIPA) home page.

Applies to utility and plant applications filed on or after June 8, 1995– does not apply to design applications– does not apply to applications filed before June 8, 1995

New rule 1.114 established for requests for continued examination

Form PTO/SB/30 may be used

37

Request for Continued Examination (RCE)

Amended 35 U.S.C. § 132 (a new subsection (b)) provides for the continued examination of an application at the request of the applicant– Provides for Director to establish a fee for such

continued examination– Provides that the fee will be subject to a fifty percent

reduction for small entities

The fee for a RCE shall be the same as the basic filing fee for a utility application

38

RCE: Change from the interim rules

Submission of an RCE is limited to an application in which prosecution is closed e.g., the last office action is a final rejection, an Ex parte Quayle, or a notice of allowability

– Submission of an RCE after a non-final rejection would not be permitted.

Note: Changes made by the Interim Rules that were not further modified by the Final Rules continue to be in effect. Thus, both the Interim and Final Rules should be consulted.

39

RCE: Requirements - New Rule 1.114

Requires the filing of (1) a request (RCE), (2) a submission, and (3) fee prior to earliest of:

– Payment of the issue fee (unless 37 CFR 1.313 petition granted)

– Abandonment

– Filing of court action (unless terminated)

Mail to Box RCE or FAX directly to the technology center

40

RCE: Submission requirements - New Rule 1.114

If reply to an action is outstanding, the submission must meet reply requirements (37 CFR 1.111) – Otherwise, the submission may be an IDS, an

amendment, new arguments, or new evidence

Submission need not accompany RCE and fee– May be a previously filed (and not entered)

amendment after final

41

RCE: Effect on continued prosecution application (CPA) practice

CPA practice will be restricted to-– design applications– utility and plant applications

(prior applications as to the CPA) filed before May 29, 2000

CPAs are expected to phase out overtime (within 2-3 years) in utility and plant applications in favor of RCE practice

42

Request for continued examination (RCE)Comparison of RCE with CPA and § 1.129(a) practice

Applicability:– RCE - Any utility or plant application filed on or after

June 8, 1995

– CPA - Any design application, and any utility or plant application filed before May 29, 2000

– Section 1.129(a) - Utility or plant applications filed before June 8, 1995 and pending for two years as of June 8, 1995

43

Request for continued examination (RCE) Comparison of RCE with CPA and § 1.129(a) practice

(cont.)

Statutory Authority:

– RCE - 35 U.S.C. § 132(b)

– CPA - 35 U.S.C. §§ 111(a), 120, and 121

– Section 1.129(a) - Section 532(a)(2)(A) of Public Law 103-465 (URAA)

44


(cont.)

Nature of proceeding:– RCE - is in fact continued examination of the same

application– CPA - is a continuing (new) application but is treated

by the USPTO as continued examination of the same application

– Section 1.129(a) - is further limited (continued) examination of the same application

45


(cont.)

Fee:– RCE - USPTO sets fee and will not charge

additional claims fee but applicant may not defer payment of the fee

– CPA - Fee must be the application filing fee including additional claims fee (applicant may defer payment under 37 CFR 1.53(f))

– Section 1.129(a) - USPTO sets fee and need not charge additional claims fee (applicant may not defer payment of the fee)

46

Request for continued examination (RCE)

Comparison of RCE with CPA and § 1.129(a) practice (cont.)

Result of a “defective” but bona fide submission or preliminary amendment:– RCE - Reply period tolled, but submission or amendment may

be treated as not fully responsive (§1.135(c))– CPA - A “responsive” submission or amendment is not required.

Caution: a preliminary amendment that cancels all claims results in an improper CPA that is not entitled to a filing date

– Section 1.129(a) - Reply period tolled, but submission or amendment may be treated as not fully responsive (§ 1.135(c))

47



Impact on Patent Term Adjustment (PTA):– RCE - Filing an RCE cuts-off further accumulation of

PTA against 3-year pendency provision

– CPA - Patent issuing on CPA not entitled to PTA accumulated in any prior application of the CPA

– Section 1.129(a) - Not eligible for any PTA

48



Number of submissions per application:

– RCE - No limit

– CPA - No limit

– Section 1.129(a) - Limit of two submissions in an application

49



Certificate of mailing (37 CFR 1.8):

– RCE - is entitled to the benefit of a certificate of mailing under 37 CFR 1.8

– CPA - is not entitled to the benefit of a certificate of mailing under 37 CFR 1.8 because it is a new application filing

– Section 1.129(a) - is entitled to the benefit of a certificate of mailing under 37 CFR 1.8

50



Divisional and continuation-in-part submissions:– RCE - No divisional (switching inventions) or

continuation-in-part (new matter) submissions permitted

– CPA - Divisional CPA permitted, but no continuation-in-part (new matter vis-a-vis prior application) submission permitted

– Section 1.129(a) - No divisional (switching inventions) or continuation-in-part (new matter) submissions permitted

51



Result on pending appeal:– RCE - RCE filing is by rule a request to withdraw a

BPAI appeal, but applicant must obtain dismissal of any pending court action to return jurisdiction to the USPTO

– CPA - CPA abandons prior application mooting an appeal pending in prior application

– Section 1.129(a) - Submission under § 1.129(a) must be filed before an appeal brief is filed

52



Inventorship:

– RCE - Inventorship continues and any changes must be via 37 CFR 1.48

– CPA - Inventorship carries over, unless applicant provides a statement deleting inventors

– Section 1.129(a) - Inventorship continues and any changes must be via 37 CFR 1.48

53



Small entity status:

– RCE - Small entity status continues

– CPA - Small entity status does not continue

– Section 1.129(a) - Small entity status continues

54

Usage of Provisional Applications for Priority

Two amendments made to 35 U.S.C. 119(e)

– (1) provides that the pendency of a provisional application carries over to the next business day if the one-year anniversary date falls on a non-business day (§ 4801), and

– (2) eliminates the requirement for copendency between a provisional application and a nonprovisional application claiming the benefit of the provisional application (§ 4801)

55

Usage of Provisional Applications for Priority

The nonprovisional application must still be filed within twelve months from the filing date of the provisional application, 35 USC 119(e)(1)

USPTO rules require (in amended 37 CFR 1.78) that the provisional application filing fee be paid within time period set in Missing Parts Notice to permit any claim to the benefit of the provisional application. Thus, revival in order to pay the provisional application filing fee will not be appropriate

56

Conversion of Provisional applications(RCE rulepackage)

It is now permissible to convert a provisional application to a nonprovisional application (AIPA § 4801, 35 USC 111(b))

– Suggest not requesting conversion of a provisional application to a nonprovisional application (under 35 U.S.C. § 111(b)(5)) because patent term will be measured from the filing date of the provisional application and extra petition and surcharge fees are required

– Suggest filing a non-provisional application claiming the benefit of the provisional application (under 35 U.S.C. § 119(e)) and patent term will be measured from the filing date of the later-filed non-provisional application

57

No Cause Suspension following RCE or CPA submissions (RCE rulepackage)

§1.103 amended to provide for no cause suspension of action by the office– must be filed with a CPA transmittal documents or with a

RCE request

– may be no longer than 3 months

– must include $130 processing fee

– CPA and RCE forms include box for requesting suspension

– Effective August 16, 2000.

58

Eighteen-Month Publication provisions of the “American Inventors Protection Act of 1999”

(P.L. 106-113)

Slides 58-88

59

Eighteen-month publication (PG Pub)

Entitled “Domestic Publication of Patent Applications Published Abroad”

Amends 35 U.S.C. § 122 (new subsection (b)) to provide for publication of applications at eighteen months from the earliest filing date claimed under title 35 (35 U.S.C. §§ 119(a)-(d), (e), 120, 121, or 365)

Final Rule, 65 Fed. Reg. 57023 (Sept. 20, 2000); Notice of Proposed Rulemaking, 65 FR 17946 (April 5, 2000). Copies available at www.uspto.gov in the American Inventor Protection Act (AIPA) home page.

60

Eighteen-month publication (PG Pub)

Applies to applications filed on or after November 29, 2000

Also, provides, at the applicant’s request, for publication

– of an application pending on November 29, 2000 (voluntary publication)

– of an application earlier than at eighteen months from the earliest filing date claimed under title 35 (early publication)

61

Eighteen-month publication (PG Pub) - applications to be published

Applications filed on or after 11/29/00 to be published include:– new applications, except design applications– continuing applications (CPAs under 37 CFR 1.53(d),

and continuations, continuation-in-part applications and divisionals under 37 CFR 1.53(b))

– national stage applications under 35 USC 371, provided the International application was filed on or after 11/29/00

Filing of an RCE will not trigger publication

62

Eighteen-month publication (PG Pub) - Exceptions to PG Pub

Applications no longer pending (e.g., abandoned)

Applications under secrecy order or whose disclosure would be detrimental to national security

Provisional applications

Design applications

Applications including a request not to publish, see next slide

63

Eighteen-month publication (PG Pub) - Requirements for Requests Not to Publish

An applicant may request that an application not be published if the invention has not been and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication

Request must be made upon filing (required by statute) (USPTO will have form on website)

USPTO regulations require that the request have a signed certification and be conspicuous

64

Eighteen-month publication (PG Pub) - Publication after Non-Publication Request

The “non-publication” request may be rescinded at any time (USPTO will have form on website)

If an application is subsequently filed in another country (or under international agreement) that requires eighteen-month publication, the applicant must notify the USPTO within forty-five days or the application will become abandoned

65

Eighteen-month publication (PG Pub) - Redacted Publication Option

If corresponding foreign applications have a less extensive description than the U.S. application, the applicant may submit a redacted copy of the application for publication that eliminates subject matter not also contained in any of the corresponding foreign applications

Such a redacted copy must be submitted within sixteen months after the earliest filing date for which a benefit is sought under title 35

66

Eighteen-month publication (PG Pub) - Publication is prior art

The patent application publication will become the predominant U.S. prior art document

Patent application publications will be available on the USPTO’s electronic search systems (image and full text searchable), but USPTO may not maintain paper copy collections

67

Eighteen-month publication (PG Pub) - Publication process

Publication will include creating a publication document (patent application publication)

An Official Gazette for these publications is not being planned

Patent application publication will be similar to a patent in format and content

– front page with title, bibliographic data, abstract, drawing figure, and IPC/US classifications

– specification (including claims) in a two columnar arrangement

68

Eighteen-month publication

(PG Pub) -

Publication process (cont.)

69

Eighteen-month publication (PG Pub) - Publication process (cont.)

Content based on the application at time of release to Technology Center (TC) for examination (basically “as-filed”)– exception: preliminary amendments will not be a part

of the published application

– unless applicant submits a clean, amended copy of the specification for publication as discussed below

70

Eighteen-month publication (PG Pub) - Publication process (cont.)

The USPTO currently has an electronic record of applications “as-filed” (PACR database) created by image scanning application papers during pre-examination processing

PACR: Patent Application Capture & Retrieval

The USPTO will augment the PACR database to also contain subsequent papers/drawings necessary to create a patent application publication

71

Eighteen-month publication (PG Pub) - Impact of Publication process on

Formal requirements of applications USPTO must require that each utility and plant

application be in condition for publication when released to TC for examination, including:

– Specification of sufficient quality for optical character recognition (OCR) conversion of image to text

– Title and abstract in compliance with 37 CFR 1.72

– Drawings of sufficient quality to readily use the patent application publication as a prior art document

– Sequence listings in compliance with 37 CFR 1.821 et seq.

72

Eighteen-month publication (PG Pub) - Publication as amended using EFS

If applicant wants the patent application publication to reflect the application as amended during examination or with preliminary amendments, applicant must file a clean copy of the application, as amended, in compliance with the USPTO’s electronic filing system (EFS)

Time for filing: EFS must be filed before the later of one (1) month from actual filing or 14 months from earliest benefit claim

73

Eighteen-month publication (PG Pub) - Additional uses of EFS submission for publication The applicant must also file an EFS copy of the

application:

– If applicant requests publication of an application pending on November 29, 2000 (voluntary publication)

– If a redacted application is to be published

– If republication of an application is requested, and If the EFS submission is not filed with the request for

redacted publication, publication will proceed using the as-filed application. For voluntary or republication, publication will not occur and the fee paid will be refunded

74

Eighteen-month publication (PG Pub) - Requests for special publication treatment

The Office will not honor requests:

– That publication occur on a specific date (request will be construed as a request for early publication)

– That two or more applications be published on the same day

– That are submitted prior to November 29, 2000

– That only a subpart of an application be published

75

Eighteen-month publication (PG Pub) - Access after publication

USPTO will not provide direct physical access to a pending published application

USPTO will provide (e.g. $200 fee if the application is 400 pages or less and $25 fee for certification if requested) a copy of the file wrapper and contents of a published application, or a copy of any one or more specific papers in a file, 37 CFR 1.14(c)(2)

76

Eighteen-month publication (PG Pub) - Third party participation after publication

35 U.S.C. § 122(c) provides for procedures to ensure that there is no protest or pre-issuance opposition to a published application (without express consent of applicant)

37 CFR1.99 will permit patents and printed publications to be submitted by third parties, but will not allow any activity that amounts to a protest or opposition by the third party– Service on applicant is required

– No more than 10 references

– No later than 2 months after publication of the application (or mailing of a notice of allowance) Unless references could not have been provided earlier

– No discussion of the references or the claimed invention is permitted.

77

Eighteen-month publication (PG Pub) - Access to Redacted application

If the published application is as redacted, the copy of the file wrapper content will also be redacted if applicant timely submits appropriately redacted copies of USPTO correspondence and applicant submissions– otherwise, the USPTO will provide a copy

of the complete file wrapper content of the application

78

Eighteen-month publication (PG Pub) - Time for making priority/continuity claims

35 U.S.C. §§ 119(b) (foreign priority), 119(e) (domestic priority - provisional), and 120 (domestic continuity - nonprovisional) amended to:

– Provide that the USPTO may set time periods within which priority/continuity claims must be filed or are waived

– Permit USPTO to accept unintentionally delayed priority/continuity claims, subject to a surcharge

79

Eighteen-month publication (PG Pub) -Time for making priority/continuity claims

Priority/continuity claims must be timely filed to permit publication as close as possible to eighteen months from earliest claim filing date

The period for presenting claims under 35 U.S.C. §§ 119(a)-(d), (e), 120, 121, or 365 will be sixteen months from the claimed priority date, or four months from the application filing date, whichever is later (cf. PCT Rule 26bis.1(a))

80

Eighteen-month publication (PG Pub) -Provisional rights based on domestic publication

If an application is published under § 122(b), the patent includes the right to a reasonable royalty for the period between the date of publication and date of patent grant provided:– Actual notice of the published application

is given– Patent claims are substantially identical to the claims

in the published application

81

Eighteen-month publication (PG Pub) -Provisional rights based on international publication

For international applications published by the IB (International Bureau), provisional rights based on IB publication requires that a copy of the publication (or copy of an English translation of the application if the publication is not in English) must be filed in the USPTO

Example A B C D

IB Publication

IB pub filed in USPTO

Actualnotice given

US pat. grant

82

Eighteen-month publication (PG Pub) - Prior art effect of U.S. published applications A patent application publication in U.S. resulting from an

application filed under 35 U.S.C. § 111(a) is prior art under 35 U.S.C. § 102(e)(1) as of its filing date

A patent application publication in U.S. resulting from an international application (IA) entering the national stage under 35 U.S.C. § 371 is intended to be prior art under 35 U.S.C. § 102(e)(1) as of its international (35 U.S.C. § 363) filing date if the IA was published in English– if the IA was not published in English, then no 102(e)(1) effect.

A second O.G. Notice is contemplated, See slide 109

83

Eighteen-month publication (PG Pub) - Prior art effect of International Bureau (IB) publication of IAs

An IB publication of an IA is prior art under 35 U.S.C. § 102(e)(1) as of its international (35 U.S.C. § 363) filing date provided it designates the US, and was published in English, but AIPA § 4508 may require 35 U.S.C. § 371 fulfillment

Benefits under 35 U.S.C. §§ 119(e), 120, and 365(c) continue to be relevant to the effective prior art date under 35 U.S.C. § 102(e)

U.S. Patent application publications and IB publications will also be prior art under 35 U.S.C. § 102(a) and (b) as of their publication date

84

Eighteen-month publication (PG Pub) - Publication fee $300.00

The cost of publication required by 35 U.S.C. § 122(b) is recovered by charging a publication fee after the notice of allowance is mailed

The publication fee will be set forth in the notice of allowance – If application is abandoned, no publication fee needed

A publication fee will have to be paid at the time of any request for “voluntary” publication, early publication, or republication, since such publications are not “required” by 35 U.S.C. 122(b)– For requests for republication, and voluntary publication, a processing

fee of $130.00, in addition to the publication fee, is required

85

Eighteen-month publication (PG Pub) - Impact on Patent Practice

Most published applications (both US and certain International Applications) are 102(e)(1) prior art and must now be considered

Multiple publications for an application are possible (because of amended claims)

Copied claims re new 35 USC 135(b) requires claims in a published application to be copied within 1 year of publication

Published applications will become the predominant form of prior art used by examiners

Re claims (with provisional rights) to be published:– applicants must determine the range of broadest to narrowest claims

that they want to be published Possible reluctance to amend or cancel claims after publication

86


Critical decisions to be made involve:– to publish (US only filed applications), – to request early publication,– to request voluntary publication (for pre 11/29/00

cases), – to publish a redacted version, – the range of claims to initially present, and – after amendment, to request republication, weigh

secrecy and possible need for CIP filings vs provisional rights, 135(b) and 102(e) prior art creation

87


Miscellaneous:– Claims in published application must be copied within

one year of date of publication (35 U.S.C. § 135(b))– Changes to biotechnology regulations (37 CFR 1.801

et seq..) on deposit of biological materials must await study by Comp. Gen. (§ 4805)

88

Eighteen-month publication (PG Pub) -change from proposed rules

Optional deferral of examination (37 CFR 1.103(d))1. Deferral may not extend beyond three years from the earliest effective filing date2. Utility or plant application only, provided:

a) that no Office action under 35 USC 132 or 151 has been issuedb) application is in condition for publication, 37 CFR 1.211(c)c) a non-publication request has not been filed, or if filed, the request has been

rescinded

d) the publication fee and processing fee are paid

89

Optional Inter Partes Reexamination practice changes of the

“American Inventors Protection Act of 1999” (P.L. 106-113)

Slides 89-113

90

Optional Inter Partes Reexamination Notice of Proposed Rulemaking, 65 FR 18154

(April 6, 2000). Copy available at www.uspto.gov in the American Inventor Protection Act (AIPA) home page– Final rule anticipated October, 2000

New statute retains ex parte reexamination, and creates an optional inter partes reexamination– Actually, statute creates two ex parte reexaminations

in addition to inter partes reexamination, because of the changes in patent owners’ appeal rights

– Applies to patents issuing from original applications filed in the United States on or after November 29, 1999

– See the Official Gazette notice published April 11, 2000, defining an “original” application filed in the United States

No inter partes reexamination requests are expected before 18 months from enactment (May, 2001)

91

Criticisms of the 1981 ex parte reexamination statute

Ex parte in nature which gives patent owner too much control (especially ex parte interviews)

The third party is not permitted to participate in patent owner’s appeal to the BPAI and to the court

The third party is not permitted to appeal the allowance of claims to the Board and to the court

The third party can lose in district court and later file a reexamination request on the same issues previously unsuccessfully raised in court

The third party can later raise in district court the same issues earlier raised in an unsuccessful reexamination

92

The effective dates of the optional Inter Partes reexamination

statute are complex

New statute also amended the patent law to permit the use of “unintentional delay” to revive a reexamination terminated for failure to timely respond to an Office action– The unintentional delay provisions, however, may not be used

until November 29, 2000, one year after enactment of the new statute but would apply to both ex parte and inter partes reexamination

93

Third party participation rights in inter partes and ex parte reexaminations

Inter partes reexamination third party rights:– Third party requester may once file written comments on any

response by the patent owner to an Office action 35 USC § 314(b)(3)

– All issues (proposed grounds of rejection) raised by the third party requester must be specifically addressed by examiner

– Third party requester may appeal to the BPAI any proposed ground of rejection not adopted by the examiner as a final decision favorable to patentability. 35 USC § 315(b)(1)

– Third party requester may not appeal the BPAI’s decision to the court. 35 USC § 134(c)

94


(cont.)

Inter partes reexamination third party rights:– Third party requester may be a party to any patent owner

appeal under 35 USC § 134 to the BPAI. 35 USC § 315(b)(2) Statute provides no right to the third party requester to

participate in the patent owner’s appeal to the Fed. Cir. Ex parte reexamination third party rights:

– No third party participation permitted other than the filing of a reply in response to a patent owner statement, but only if the patent owner elects to file a statement

– Third party requester has no appeal rights

95


(cont.)

Inter partes reexamination appeal rights:– Patent owner and third party requester may both appeal to the

Board, but only after a final rejection or a final decision favorable to patentability. New 35 USC § 134(b) & (c)

– Patent owner may appeal the BPAI’s decision, but only to the Fed. Cir. New 35 USC § 141

– Third party requester may not appeal the BPAI’s decision. New 35 USC § 134(c)

96


(cont.)

Ex parte reexamination of a patent issuing from original application filed in U.S. prior to November 29, 1999, (prior filed patents):

– New 1999 statute sections do not apply to prior filed patents. Section 4608(a) of Public Law 106 -113.

– Patent owner may appeal to the BPAI on any claims twice rejected. Prior 35 USC § 134.

– Patent owner may appeal the BPAI’s decision to the Fed. Cir. or Dist. Ct. Prior 35 USC § 141 and § 145.

97


(cont.)

Ex parte reexamination of a patent issuing from original application filed in U.S. on or after November 29, 1999, (newly filed patents):– New 1999 statute sections apply to newly filed patents. Section

4608(a) of Public Law 106-113.

– Patent owner may appeal to BPAI only after a final rejection. New 35 USC § 134(b).

– Patent owner may appeal BPAI’s decision only to the Fed. Cir. Amended 35 USC § 141. Amended 35 USC § 145 limits an appeal to the Dist. Ct. solely to an applicant under 35 USC § 134(a).

98

Highlights of proposed inter partes reexamination rules §§ 1.902-1.997 The filing fee for inter partes reexamination is $8,800.

(37 CFR § 1.20(c)(2)) – No change in the $2,520 filing fee for ex parte reexamination.

(37 CFR § 1.20(c)(1))– If reexamination is denied, the Office will refund all of the fee except for

$830 in both inter partes and ex parte reexaminations. 37 CFR § 1.26)

Request for inter partes reexamination must include a certification that the third party requester is not estopped under the statute from filing an inter partes reexamination request. (37 CFR § 1.915(b)(7)).

Request for inter partes reexamination must include a statement identifying the real party in interest who is the third party requester. (37 CFR § 1.915(b)(8)).

99

Highlights of proposed inter partes reexamination rules §§ 1.902-1.997

(cont.)

Determination on request within three months of filing (statutory requirement) as to whether prior art raises a substantial new question of patentability (SNQ). (37 CFR § 1.923) If SNQ is found, reexamination is ordered. (37 CFR § 1.931)

– A SNQ is present if reasonable examiner would consider the art important is deciding to allow a claim. Same standard as is used in ex parte reexamination

– If reexamination is denied, requester may petition for review within one month. Final decision denying reexamination is not appealable. (37 CFR § 1.927)

100


(cont.)

First Office action on the merits will usually accompany the reexamination order. (37 CFR § 1.935)

Inter partes reexamination proceeding conducted with special dispatch. Director may suspend inter partes reexamination for good cause. (37 CFR § 1.937)– Ex parte reexaminations may not be suspended.

Ethicon v. Quigg, 7 USPQ2d 1152 (Fed. Cir. 1988) Patent owner responses and third party requester comments may

not exceed 50 pages in length, excluding amendment, appendices and reference material. (37 CFR § 1.943(b))

Appellant briefs may not exceed 30 pages or 14,000 words all other briefs may not exceed 15 pages or 7,000 words (37 CFR § 1.943(c))

101


(cont.) Third party requester may once file written comments each

time patent owner files a response to an Office action. Comments limited to issues raised in Office action and patent owner response. (37 CFR § 1.947) – Comments must be filed within 30 days of notice of service of patent owner

response. No extensions of time permitted. (Response time set by statute 37 CFR § 314(b)(3))

Second Office action will normally be an action closing prosecution. Note that this is not a final action, as a final action triggers appeal rights to the patent owner and third party requester. (37 CFR § 1.949)– After close of prosecution the patent owner may file comments which may

include a proposed amendment (subject to criteria of 37 CFR § 1.116). If patent owner files comments, the requester may file a response to the comments. (37 CFR § 1.951)

102


(cont.)

After consideration of comments after close of prosecution, examiner issues a right of appeal notice which includes a final action. (37 CFR § 1.953 (a) & (c))

– Expedited Right of Appeal Notice: Any time after patent owner’s response to initial Office action, all parties may stipulate that issues are appropriate for final action, and request the examiner to issue a right of appeal notice. If examiner determines no other issues are present or should be raised, a right of appeal notice shall issue. (37 CFR § 1.953(b))

103


(cont.)

Patent owner may appeal final rejection of claims to the BPAI and to the Court of Appeals for the Federal Circuit. (37 CFR §§ 1.959-1.983) – Third party requester may participate in patent owner appeal at

the BPAI, but not at the Court. 35 USC § 315(b)(2)

Third party requester may appeal final determination of patentability to the BPAI, but not to the courts. (37 CFR §§ 1.959-1.983)– Patent owner may participate in third party appeal

at the BPAI

104


(cont.)

No interviews addressing the merits will be permitted (neither patent owner nor third party requester) in inter partes reexamination. (37 CFR § 1.955) No change in current ex parte reexamination interview practice. (37 CFR § 1.560)

Patent owner extensions of time must be requested on or before the end of the response period. (37 CFR § 1.956)– Reexamination terminated for failure to timely respond

may be revived under “unavoidable delay” or “unintentional delay” provisions of statute (37 CFR § 1.958) however, the unintentional delay provisions are not effective until November 29, 2000

Multiple ordered inter partes reexaminations will normally be merged. (37 CFR § 1.989)

105


(cont.)

Concurrent reissue and reexamination cases will normally be merged. (37 CFR § 1.991)

In any merged proceeding, third party requester rights to participate will be preserved to extent provided for in regulations. (37 CFR § 1.995)

Upon conclusion of inter partes reexamination, a certificate will issue. (37 CFR § 1.997) – Canceling any patent claim determined to be unpatentable.– Confirming any patent claim determined to be patentable.– Adding any amended or new claim determined

to be patentable

106

Policy decisions for conductinginter partes reexamination in the Office

All inter partes and ex parte reexaminations will be assigned to a different examiner than the examiner who issued the patent unless the group director determines otherwise.

Consideration being given for requiring an appeals type conference prior to the right of appeal notice (final action) and prior to the close of prosecution (allowance of case) in inter partes reexaminations. Simarily, an appeal type conference to be required in ex parte reexaminations prior to final rejection and allowance of case.

107


(cont.)

At the initial start of inter partes reexamination (when requests begin to be filed), the examination will be conducted by a primary examiner in the examining group having art expertise in the patent under reexamination.– Administrative oversight by the Special Program Examiner in

the Tech. Center (TC).– Procedure and policy oversight by Legal Advisors

in the Office of Patent Legal Administration (OPLA).

Long-range organizational structure of inter partes reexamination to be decided as filings increase.

108


(cont.)

Contrasts with current ex parte reexamination practice.– Examination conducted by a primary examiner in the examining group

having art expertise in the patent under reexamination.– Administrative oversight by the Special Program Examiner in the TC.– No oversight by Legal Advisors in OPLA

All inter partes and ex parte reexamination files will be scanned into an electronic data base. The scanning will be maintained current during the prosecution of the case.– All inter partes reexamination files will be centrally stored and

processed in the Central Reexamination Unit currently located in the OPLA.

– All ex parte reexamination files will continue to be stored and processed in the TCs

109

Inter partes reexamination filing prohibitions

Once an order for inter partes reexamination has been issued, neither the same third party requester, nor its privy, may request another inter partes reexamination until the certificate is published in the inter partes reexamination, unless authorized by the Director. 35 USC § 317(a).

110

Inter partes reexamination filing prohibitions

(cont.)

Once a final decision has been entered against a party in a civil action that that party has not proven the invalidity of a patent claim; or, a final decision in an inter partes reexamination filed by a third party requester is favorable to the patentability of a patent claim:– Neither that party (nor its privy) may thereafter request inter partes

reexamination of such patent claim on the basis of any issue raised, or which could have been raised, in the civil action or inter partes reexamination. Further, any pending inter partes reexamination requested by that party may not thereafter be maintained in the USPTO

– However, inter partes reexamination may be requested based upon newly discovered prior art unavailable to the third party requester and the USPTO at the time of the inter partes reexamination. 35 USC § 317(b)

111

Civil action estoppel

A third party requester in a prior inter partes reexamination is estopped from later asserting in any civil action the invalidity of any claim finally determined to be valid and patentable on any ground the third party requester raised or could have raised in the inter partes reexamination.

The third party requester, however, may later assert invalidity based upon newly discovered prior art unavailable to the third party requester and the USPTO at the time of the inter partes reexamination. 35 USC § 315(c)

112

Civil action estoppel(cont.)

Any party who requests inter partes reexamination is estopped from later challenging in a civil action any fact determined in a prior inter partes reexamination; – Except with respect to a fact determination later proved erroneous

based on information unavailable at the time of the inter partes reexamination decision.

– Severability clause: If this section is held to be unenforceable, the enforceability of the remainder of the Act shall not be denied as a result. Section 4607 of Public Law 106-113.

113

Stay of litigation forinter partes reexamination

1981 reexamination statute did not provide for automatic stays of pending litigation.– Congress decided stays were best left to discretion

of the court

Once inter partes reexamination is ordered, patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claim subject to the inter partes reexamination, unless court determines that a stay “would not serve the interests of justice.” 35 USC § 318

114

Non-Rulemaking Implementation of AIPA -

O.G. Notices / Training Materials (P.L. 106-113)

Slides 114-116

115

Non-Rulemaking Implementation of AIPA - O.G. Notices / Training Materials

The first O.G. Notice, published April 11, 2,000, indicates:

– “Original application for patent” does not include reissue applications, nor RCEs, but does include all continuing applications (1.53(b) and (d)) re: Inter Partes Reexam

– Filing of a continuing application to seek the benefit of new section 103(c)/102(e) re exclusion of common assignee type prior art: CPA - yes; RCE - no

– Filing of a reissue application to seek the benefit of new section 103(c)/102(e) re exclusion of common assignee type prior art:

yes, but recapture may be a bar

116

Non-Rulemaking Implementation of AIPA - O.G. Notices / Training Materials (cont.)

The second OG notice will address:– 102(e)(1) prior art date of

published International Applications published US applications with priority to

– International Applications filed prior to 11/29/00– domestic applications filed prior to 11/29/00

– 102(e)(2) prior art date of patents maturing from applications with domestic priority international priority foreign priority

– The applications that are subject to the above new prior art

Examples will be given to clarify interpretations

117

Patent Business Goals

Slides 117 - 158

118

Patent Business Goals

Final rules: 65 Fed. Reg. 54603 (September 8, 2000)

– Effective date: 2 months from publication, (November 7, 2000) for most changes (see 65 Fed. Reg. 54604)

119

§ 1.27 - Establishing Small Entity Status

Simplified the procedure for asserting a claim for small entity status

Applicants still need to make a thorough investigation before making an assertion of entitlement to small entity status

New standard is effective on the date of publication in the Federal Register

120

§ 1.27(c)(1) - Assertion by Writing

Small entity status can be established by a simple written assertion of entitlement to small entity status

The Office will liberally construe any written reference to small entity status to be a request for small entity status

121

§ 1.27(c)(2) - Parties Who Can Sign and File Assertion

The parties who can assert small entity status are expanded to include:– a registered practitioner (need not be of record)

– one of the inventors (instead of all inventors)

– a partial assignee (instead of all assignees) An assertion of small entity status by an assignee

must be filed by a § 1.33(b) party

122

§ 1.27(c)(3) - Assertion by Fee Payment

Payment of any exact small entity basic filing (§§

1.16(a), (f), (g), (h), or (k)) or basic national fee (§§ 1.492(a)

(1) -(a)(5)) is sufficient to assert and obtain small entity status (even if the wrong exact basic filing or national fee is identified)

Payment of any other small entity fee in its exact amount will not result in small entity status absent a specific written assertion

123

§ 1.72 - Title and Abstract

Title should be as short and specific as possible and located on the first page of the specification, unless supplied in an application data sheet (§ 1.76)

Abstract should be brief, no longer than 150 words, and on a separate piece of paper. – An application filed with an abstract having more than 150 words

cannot be published and will be held in OIPE until corrected.

124

§1.76 - Application Data Sheet

Provides for a sheet(s) containing bibliographic and other application information in a specified format

This information includes applicant, correspondence address, representative, domestic priority claim, and foreign priority claim information

Guide to the Application Data Sheet can be found on the USPTO’s Web site at http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html

125

§ 1.97(b) - Filing Information Disclosure Statement (IDS)

Eliminated the 3-month window for filing an IDS in a CPA filed under § 1.53(d)

If a 3-month window is desired, applicant may:– Request a 3-month suspension of action by the Office

under §1.103 (note this would be a PTA reduction)

– Pay filing fee later with a surcharge in response to missing parts notice

126

§ 1.97(c) - Filing IDS Before Close of Prosecution

Added “or an action that otherwise closes prosecution”– To provide for types of actions that close prosecution

other than final Office action and notice of allowance, e.g., an Ex parte Quayle action

Fee for an IDS submission under § 1.97(c)– Reduced from $240 to $180 (§ 1.17(p)) to reflect the

average cost of processing an IDS submission filed under § 1.97(c)

127

§ 1.97(d) - Filing an IDS After Close of Prosecution & Before Payment of Issue Fee

Eliminated the requirement for a petition Replaced the requirement for a petition fee of $130 with an

IDS processing fee of $180 (§ 1.17(p))– The IDS processing fee reflects the average cost of processing an

IDS submission filed under § 1.97(d)

– The fee for § 1.97(c) and (d) are now the same

128

§ 1.97(e)(1) - Statement for Filing IDS under §§ 1.97(c) and (d)

Amended to require statement that the first

citation of the item by a foreign patent office in a

counterpart foreign application was not made, in

any communication from the foreign office, more

than three months prior to the IDS filing

129

§ 1.98 - Content of IDS

Copies of any cited U.S. patent applications are required under § 1.98(a)(2)(iii)

– Specification (including the claims), and the drawings, of the cited application,

or

– The portion of the application which caused it to be cited, including any claims directed to that portion

130

§ 1.105 - Requirement for Information

Examiner or other Office employee may require the submission, from individuals identified under 37 CFR 1.56(c), or any assignee, information reasonably necessary to properly examine or treat a matter Where an assignee has asserted its right to prosecute, may also be applied to such assignee. Any reply that states that the information required to be submitted is unknown and/or is not readily

available to the party or parties from which it was requested will be accepted as a complete reply. The requirement for information of paragraph (a)(1) of this section may be included in an Office

action, or sent separately. A reply, or a failure to reply, to a requirement for information will be governed by §§ 1.135 and

1.136.

131

§ 1.105 - Requirement for InformationExample Requirements

Commercial Databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.

Search: Whether a search of the prior art was made, and if so, what was searched. Related Information: A copy of any non-patent literature, published application, or patent (U.S. or

foreign), by any of the inventors, that relates to the claimed invention. Information Used to Draft Application: A copy of any non-patent literature, published application,

or patent (U.S. or foreign) that was used to draft the application. Information Used in Invention Process: A copy of any non-patent literature, published application,

or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.

Improvements: Where the claimed invention is an improvement, identification of what is being improved.

In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.

132

§ 1.105 - Requirement for Information Reasonable Necessity

Necessity – arises from a lack of accessible pertinent art or a suggestion of a specific

need from the record or examiner’s search and analysis

– examiner will consider the response and apply to the examination as appropriate

Reasonableness implies– Examiner performs the search ordinarily performed for such subject

matter and finds the the need for specific information

– Office does not have access to necessary information

– Applicant or assignee likely has access to necessary information

133

§ 1.105 - Requirement for Information Requirement Criteria

Need for search areas used and references found by applicants Need for base technology teachings as from inventors’ publications

and references used to draft application Need for references implied in disclosure or response Need for information of inventors’ or competitors’ product or service Need for industry technical or legal standards used in the invention

design

134

§ 1.105 - Requirement for Information Relation to § 1.56

§ 1.105 requirement is separate from § 1.56 and any art material to patentability must still be submitted in an IDS indicating that such art is submitted under the requirement of § 1.56 .

§ 1.105 requirement for information is not necessarily material to patentability but is necessary for a complete examination on the merits

135

§ 1.121 - Amendment by Replacement Paragraph/Section/Claim

The changes to amendment practice were made effective on November 7, 2000, however, amendments in compliance with former 1.121 will be accepted until March 1, 2001.

ADVANTAGES OF CHANGES TO RULE 1.121:

Provides for amendment of the specification/claims by replacement paragraphs/sections/claims

Eliminates handwritten red-ink amendment entries in specifications, and claims with underlining and bracketing

Clean text in specs and claims facilitates OCR scanning in patent publication process

136

§ 1.121 - Amendment by Replacement Paragraph/Section/Claim (cont.)

Rule language is clearer and easier to understand

Printed patents should have fewer errors

Improves efficiency of secretaries, and paralegal staff (no more handwriting in of changes), especially when used with optional paragraph numbering

137

§ 1.121(b) - Amendment by Replacement Paragraph/Section

How to make amendments to the specification:

Submit a clean (with no underlining or bracketing) amended paragraph/section with an instruction to substitute it for the pending paragraph/claim

Identify the pending paragraph/section to be replaced by any clear instruction (e.g., paragraph [0045], the paragraph beginning on page x, line y; the 3rd full paragraph on p.3, etc.)

Also submit a marked-up version of the prior pending paragraph/section with all changes (relative to the prior paragraph) shown by any conventional comparison system

138

§ 1.121(b) - Amendment by Replacement Paragraph/Section

How to make amendments to the specification (cont.): The text of any added (new) or deleted paragraph does not have to be

presented in any marked-up version (with underlining and bracketing); an indication that the paragraph has been added or deleted is sufficient, e.g., “The paragraph beginning at p. 2, line 6, has been deleted.”

A substitute specification may be submitted for extensive amendments (must comply with § 1.125)

139

§ 1.121(c) - Amendment by Replacement Claim

How to make amendments to the claims: Submit a clean (with no underlining and bracketing) amended claim with

an instruction to substitute it for the pending claim with the same number; also submit a marked-up version of the prior pending claim with all changes shown by any conventional comparison system

Any new or canceled claim does not have to be in marked-up version; an indication that claim X is new or claim Y was canceled is sufficient

Both the clean amended claim and the marked-up version should have the same expression: “amended,” “twice amended,” etc. in parentheses after claim number

140

§ 1.121(c) - Amendment by Replacement Claim

How to make amendments to the claims (cont.): A claim may be canceled by an instruction (e.g., “cancel claim 3”)

A canceled claim can be reinstated only by re-presentation of the complete text of the claim with a new claim number

141

§ 1.121(c)(3) - Amendment by Replacement Claim

How to make amendments to the claims (cont.):

A clean set of all pending claims with the same numbers as the pending claims being re-presented can be submitted at any time (provided the requirements of §§ 1.116 and 1.312 are met)

This submission will be construed as directing the cancellation of all previous versions of the re-presented claims

The absence of an accompanying marked up version constitutes an assertion that the claim has not been changed relative to the immediate prior version

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§ 1.311(b) - Authorization to Charge Issue Fee

§ 1.311(b) has been amended to only allow authorizations to charge issue fee to be filed after the mailing of the Notice of Allowance and Issue Fee Due (PTOL-85).– Payment of an incorrect issue fee or submission of a completed fee

transmittal form (PTOL-85B) without payment will operate as a valid request to charge the correct issue fee to a previously

authorized deposit account.

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§ 1.121(g) - Amendment by Replacement Paragraph/Section/Claim

Exception for Examiner’s Amendments:

Examiner’s amendments are exempt from this rule

Amendment(s) to paragraph(s)/claim(s) in an examiner’s amendment can be made by instruction to insert/delete specific word(s)

Examiners will not be required to provide either a clean version or a separate marked up version of paragraph(s) or claim(s) amended by an examiner’s amendment

A clean version of a paragraph/claim, or a portion of a paragraph/claim submitted by applicant in a fax or e-mail may be relied upon as an attachment to an examiner’s amendment

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Compact Disc (CD) Submissions

The changes to permit CD-ROM submissions are effective November 7, 2000, however, the Office is considering waiving this delay to allow for these submission at an earlier date (an OG notice would be issued). The changes become mandatory on March 1, 2001

§ 1.52 Generally defines requirements for submissions on compact disc

§ 1.58 Requirements for tables submitted on compact disc § 1.96 Computer listings on compact disc § 1.821+ Nucleotide and/or Amino Acid Sequences on compact disc

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Compact Disc Specifications Added to § 1.52

Submission on Compact Disc of certain specification parts in lieu of paper or microfiche

Limited to CD-ROM (Compact Disc-Read Only Memory) and CD-R (Compact Disc-Recordable) media– No CD-RW media allowed

– No DVD

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§ 1.52(e) - Disc Requirements

Must conform to (International Standards Organization) ISO 9660 standard

A duplicate copy of each disc is required except for conventional CRF– Transmittal letter must state duplicate discs are

identical

Specification must contain an incorporation-by-reference of the material on compact disc § 1.77(b)(4)

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§ 1.52(e) - Disc Requirements (cont.)

All files must be ASCII, no proprietary file formats permitted

Data may span multiple discs if required Discs must be transmitted in protective packaging

and labeled as provided in the rule Files on CD must be identified in specification as

provided in the rule (by name,size,date)

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§ 1.52(e) - Application Parts

Submissions on Compact Disc limited to:– Nucleotide and/or amino acid sequence listing (§

1.821(c))

– Tables over 50 pages (§ 1.58)

– Computer program listings over 300 lines (§ 1.96)

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§ 1.58 - Tables on Compact Disc

Must be ASCII file no proprietary file or non-ASCII row/column format delimiters allowed (e.g. no MS-Word “Tables” or spreadsheets)

Data must be arranged to preserve row and columns in tables and formulas when viewed with a text viewer

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§ 1.96(c) - Computer Listings on Compact Disc

Replaces microfiche submissions (less expensive, more available)

Mandatory for computer program listings over 300 lines, optional for smaller listings

Listing must be an ASCII file (e.g. no proprietary file formats allowed)

Microfiche submissions under former rule may be made until March 1, 2001

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§ 1.821(c) - Nucleotide and/or Amino Acid Sequences

In lieu of paper copy, this is in addition to the CRF submission under § 1.821(e)– Must submit duplicate discs and the CRF even if the

CRF submission under § 1.821(e) is the same as the Compact Disc under § 1.821(c)

Only ASCII files, no proprietary file formats 72 characters per line All § 1.52(e) requirements apply

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How to create a CD for submission

Step 1: Create ASCII text files

- Select “text” as save “type” on file save menu

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How to create a CD for submission cont’d

Step 2: Copy files to create duplicate compact discs

ONLYCD-ROMor CD-R

COPYONLYASCIIFILES

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Step 3: Read each file on each disc with an ASCII (text) viewer to verify:

- all data is present

- tables are accurately rendered to maintain rows and columns

- chemical and mathematical formulas areaccurately rendered

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Step 4: Verify file directory information: name, size, and creation date on each disc matches the information on: – list of discs and files on each disc in the transmittal

letter

– list of discs and files on each disc in the specification

– verify duplicate discs are identical

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Step 5: Label each compact disc as required by 37 CFR 1.52(e) (4) and (6) including “Copy 1” and “Copy 2” nomenclature

Step 6: Place each compact disc in a unsealed padded and protective mailing envelope

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Step 7: Verify there is an incorporation-by-reference statement to material on compact discs in body of application

Step 8: Verify there is a statement in the transmittal letter indicating that duplicate discs areidentical

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Training MaterialsPatent Business Goals

Patent Business Goals homepage– Based on the AIPA homepage and will include:

Copies of the rule packages (ANPR, NPR and FR) and comments Presentation materials Specific bulletins Questions and Answers forum Revised forms

External training– Overview provided as part of the remaining AIPA presentations– As requested

MPEP revision (anticipated release Spring 2001)

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For Further Information Contact:

AIPA in general- www.uspto.gov click on American Inventors Protection Act

Each rule package has more detailed contact information- Robert Spar- 308-5107 Electronic Filing System (EFS) - Jay Lucas (703)308-6868 ([email protected]) www.uspto.gov click on Patents Electronic Business Center

Fees- Matthew Lee- (703)305-8051

Invention Promotion Companies/Complaints- Dick Apley (703)306-5568

PAIR (Patent Application Information Retrieval)- PEBC helpdesk (703)305-3028www.uspto.gov click on Patents Electronic Business Center

Patent Term Adjustment (PTA)- Karin Tyson 306-3159, Robert Clarke 305-9177

Pre-grant Publication of Applications - Robert Bahr - (703)305-0471

Provisional Applications- Fred Silverberg (703)305-8986

Reexamination- Jerry Dost (703)305-8610 or Ken Schor 308-6710

Reissue- Joe Narcavage (703)305-1795

Requests for Continued Examination (RCE)- Gena Jones (703)306-5586

102(e), 102(g) and/or 103(c) - Robert Clarke 305-9177 or Jeanne Clark 306-5603

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PBG For Further Information Contact:In general - www.uspto.gov - Hiram Bernstein (703) 305-8713,

Robert Bahr (703) 308-6906 or Bob Spar (703) 308-5107.

Robert Bahr ((703) 308-6906): §§ 1.22, 1.25, 1.26, 1.53, 1.55, 1.72, 1.76, 1.78, 1.112, 1.131, 1.132, 1.137, 1.138, 1.193, 1.311 through 1.313, 1.366, Part 5, and Part 10.

Hiram Bernstein ((703) 305-8713): §§ 1.9, 1.22, 1.26 through 1.28, 1.41, 1.48, 1.56, 1.85(c), 1.97, 1.98, 1.105, 1.111, 1.115, 1.133, 1.136, 1.322 through 1.324, and Part 3.

Robert Clarke ((703) 305-9177): Processing and petition fees, and § 1.52(b)(2).

James Engel ((703) 308-5106): §§ 1.152 et seq. Eugenia Jones ((703) 306-5586): §§ 1.9, 1.27, and 1.28. Jay Lucas ((703) 308-6868) or Anton Fetting ((703) 305-8449): §§ 1.96,

and 1.821 et seq.

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PBG For Further Information Contact cont’d:

Joe Narcavage ((703) 305-1795): §§ 1.52(b)(6), 1.121, 1.125, and 1.173 et seq.

Kenneth Schor ((703) 308-6710): §§ 1.97, 1.98, 1.173 et seq., 1.510 et seq., and Part 3.

Fred Silverberg ((703) 305-8986): § 1.63 (oath or declaration) form. Karin Tyson ((703) 306-3159): §§ 1.14, 1.33, 1.44, 1.47, 1.51, 1.52 (except

(b)(2) and (b)(6)), 1.59, 1.63, 1.64, 1.67, 1.77, 1.84, 1.85 (except (c)), 1.163, and 1.720 et seq.

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Thank You

Documents

Implementation Perspective of the USPTO on the “American Inventors Protection Act of 1999” (P.L. 106-113); and the changes to implement the Patent Business