Office of Initial Patent Examination (OIPE)

Pre-exam Process

Open & Sort Assign SN

Post Fees(RAM)

Prepare for Scanning &

Validate Post Card

Security Screen

Scan and Index

(PACR)

Formalities Review (PALM)

TechnologyCenters

USPSMail

CustomerWindow

ClassifyNotices

& Filing Receipts

Non Provisional Application Days to Mail Filing Receipt

January - June 2001

Within 30 Days

31 - 60 Days

61 - 90 Days

91 - 120 Days

121 - 150 Days

151 - 180 Days

More Than 180 Days

10.5%

47.1%

21.1%

9.9%

7.3%

2.3%

1.8%

Provisional ApplicationDays to Mail Filing Receipt

January - June 2001

Within 30 Days

31 - 60 Days

61 - 90 Days

91 - 120 Days

121 - 150 Days

151 - 180 Days

More Than 180 Days

0.6%

6.0%

33.6%

43.0%

12.1%

3.5%

1.2%

Filing Receipt Quality

OctoberNovemberDecemberJanuaryFebruaryMarchAprilMayJune

71%72%80%80%87%94%98%97%98%

18 Month Publication

Publication of utility and plant applications as filed after 18 months from earliest effective filing date

May request early publication May provide assignment for publication Applications must be ready for publication

Specification Requirements

Left margin at least 2.5 cm (1") and all other margins at least 2.0 cm (3/4") Recommend at least 2.5 cm (1”) top

A4 (21cm x 29.7 cm) or 8-1/2"x 11" Typewriter or mechanically printed Line spacing 1-1/2 or double-spaced A verified English translation

Specification Requirements

Claim or claims must commence on a separate sheet

Abstract must commence on a separate sheet

An abstract must not exceed 150 words Title must not exceed 500 characters Figures not permitted in specification

Drawing Requirements

Top and left margins at least 1 inch, right margin at least 5/8 inch, and bottom margin at least 3/8 inch

Drawing sheets must be either 8 ½ by 11 inches or DIN size A4

Photographs not be permitted unless what is being shown cannot be drawn

English alphabet required, except where another alphabet is customarily used

Drawing views numbered in consecutive Arabic numerals starting with 1

Corrected Application Papers

Incorrect margins – 16.4%Abstract missing – 1.1%Abstract exceeds 150 words – 0.6%Abstract not on separate sheet –

0.4% Claims not on separate sheet – 0.8%

Pre Grant Publication

Pre Grant Publication legislation requires that the Raw Sequence Listing is published.

Certain Sequence Requirements must be complied with before the application is released from OIPE to the Technology Centers

OIPE REQUIREMENTS

Raw Sequence Listing submitted on Computer Readable Format (CRF) (CFR 1.821(e))

May use the CRF from a previously filed application (37 CFR 1.821(e))

Paper or Compact Disc copy of Sequence Listing (37 CFR 1.821(c))

Statement indicating that both the Raw Sequence Listing (CRF) and paper or CD copy are the same (37 CFR 1.821+)

Computer Readable Copy

May be the original CRF of the “instant” application or the CRF from a previously filed application under 37 CRF 1.821(e)

OIPE refers to this as a “Transfer Request”

Raw Sequence Listing (CRF)

The receipt of a CRF or Transfer Request is recorded in PTO’s PALM database if received when the application is filed

The CRF or Transfer Request is delivered to the Scientific and Technical Information Center (STIC) for review

STIC Performs Review of CRF

If the CRF is in compliance, it is recorded in PALM and a Raw Sequence Listing is printed and matched with the file wrapper

If problems are found, one of the following reports are printed and matched with the file wrapper

CRF Problem Report

CRF is Damaged or UnreadableCRF is Blank or Empty (no files)CRF has virus or not in ASCII textCRF does not contain a Sequence

Listing

A copy of the report is mailed to the customer

Raw Sequence Listing Error Report

The error report contains many potential problems with the Sequence Listing provided on the CRF.

This report is also mailed to the customer to specify the exact nature of the CRF problem

Some Examples of RSL Error Report Problems

Nucleotide/amino acid sequences “wrapped” to the next line of the RSL

Incorrect line length (max. 72 characters)

Misaligned amino acid numberingSkipped or missing sequencesCorrupted Files

OIPE Formalities Review

Check for the presence of nucleotide/amino acid sequences in the following documents:

Preliminary AmendmentSpecificationClaimsDrawing figures

Sequence ID Numbers

The presence of SEQ ID NO in the preliminary amendment, specification, claims or drawing figures indicates that the Raw Sequence Listing and paper or CD copy of the Sequence Listing are required

OIPE Formalities Review Continued

Review STIC analysis of CRF Verify the presence of a Sequence ListingCheck for statement (under 37 CFR 1.821)

that both the CRF and paper or CD copy of Sequence Listing are the same

Compare header information of the RSL and Sequence Listing – verify that both are the same

RLS/Sequence Listing Comparison

Header information checked:<110> Names of Inventors<120> Title of Invention<130> Attorney Docket Number<160> Number of Sequences

Notification of Sequence Problems

OIPE notifies customers via Notice to Comply with Requirements for Patent Applications Containing Nucleotide Sequence And/Or Amino Acid Sequence…

Problems may also be listed on a Notice to File Missing Parts or Notice to File Corrected Application Papers

Sequences – Compliance Not Required

Branched Sequences Ala Leu Asp Arg

IGluTyrTrp

Sequences – Compliance Not Required

D-Type amino acid sequencesGln Lys D-Ser D-Arg Ile Val

Fewer than 10 nucleotidesatgctgca

Compact Disc (CD) Submissions

Parts of application can now be filed on compact disc (CD) in lieu of paper, effective September 8, 2000, under 37 CFR 1.52(e)

Large tables over 50 pages (37 CFR 1.58)

Computer program listings (37 CFR 1.96)

Nucleotide and/or Amino Acid Sequences (37 CFR 1.821+)

Compact Disc (CD) Submissions

Submission must be on CD-ROM or CD-R media only - no CD-RW or DVD allowed

CD must conform to ISO 9660 standards Files must be in ASCII format CDs must be submitted in duplicate (each

CD set must be labeled Copy 1 and Copy 2) Copy 2 must be an exact duplicate of Copy

1 (same file name, file size, date) Contents of CD (name, size, date) must be

indicated on transmittal letter and in specification