Embed Size (px)
Citation preview
2014-07-14 oc.version.
University of Rochester UR Ventures Standard Operating Procedures for Intellectual Property Matters
The University of Rochester
LEARN, DISCOVER, HEAL, CREATE—AND MAKE THE WORLD EVER BETTER
2 | P a g e
Introduction
Dear Law Firm Colleagues:
The following default instructions have been established in an effort to streamline our procedures and to provide for clarity and consistency in managing our intellectual property matters. We appreciate your efforts to help us control our patent expenses and hope that these guidelines are useful to you in that regard. Please don’t hesitate to contact us if any instruction is problematic or missing. Review and improvement of this document will be ongoing. We value your feedback and suggestions at all times.
We have a dedicated IP team consisting of two attorneys and two patent paralegals to manage all patent related matters for the UR Ventures office. While default instructions have been established for many routine matters, other matters require case-specific decisions which our IP team will provide.
In the unlikely event that you are unable to reach an IP team member for instruction on a critical deadline, please take the necessary action(s) to keep a pending application or an issued patent in force.
Effort has been made to ensure our instructions comply with current patent law. Please notify us if any instruction conflicts with current rules.
Thank you for taking the time to review our procedures and for your commitment to the success of our efforts.
Meliora,
Carissa Childs, Erin Miterko, Laura McKnight, Reid Cunningham
3 | P a g e
General
Contact Information
UR Ventures University of Rochester 601 Elmwood Avenue, Box URV Suite G.11311 Rochester, NY 14642 Telephone main: 585.276.6600 Fax: 585.785.8829 Address for all patent related communications: [email protected] IP Team Reid K. Cunningham, Intellectual Property Attorney – Physical Sciences [email protected] Direct Telephone: 585.276.6618 Carissa R. Childs, Intellectual Property Attorney-Life Sciences [email protected] Direct Telephone: 585.276.6603 Erin E. Miterko, Intellectual Property Manager [email protected] Direct Telephone: 585.276.6614 Laura K. McKnight, Senior Intellectual Property Manager [email protected] Direct Telephone: 585.276.6612
Visit our website URVentures ▪ Follow us on Twitter ▪ Read our WordPress blog ▪ Like us on Facebook ▪ Join our LinkedIn Group
4 | P a g e
General
Paralegal and Administrative Staff In furtherance of our efforts to manage costs, we ask that correspondence and routine patent prosecution communications be handled and billed by qualified paralegal staff or administrative staff where appropriate and permissible.
Correspondence – Delivery & Addressees Transmit all patent prosecution matters in electronic form; No paper copies
o Exception: original issued patent document. One copy only o Direct all communications via email to TechTransfer at
[email protected] Always include the UR reference no. (“tech id”) in the subject line.
o Note: format will be #-##### or #-#####-#####
Where practical, please include the following in the email subject line: type of action required/reported and due date or indication: “no action required”
Correspondence – Content Email format is suggested for brief reports of matters such as publication notices, IDS
filings, filing reminders, assignment recordation etc. where the pertinent information can easily be contained in the body of the email, eliminating the need for a formal letter attachment to transmit the information
If you determine that the message content is substantive, lengthy, or otherwise more appropriately transmitted in a letter, please send the customary letter attachment
Email and letter greetings should be to the IP Team
o Dear IP Team:
Correspondence – Attachments Always attach these to the email:
Patent application as filed AND Patent specification in WORD format Office actions/Examiner’s reports/Restriction requirements accompanied with currently
pending claims Application filing receipt(s) Draft applications, draft responses, etc. which require review Non-patent cited references should be attached only in the absence of an extranet
Where possible, please provide searchable pdf documents if the document requires IP Team or inventor review & comment
5 | P a g e
General
Inventor Information The inventor(s) contact, residency and citizenship information necessary for patent applications is contained in the invention disclosure provided to our office by the researcher/inventor. If patent protection is sought, the ip attorneys will discuss the invention disclosure, IDS materials, prior art searches, claims scope, etc. with outside counsel. Discussions with inventors will be arranged by the IP Team. We will provide updated email and home addresses as needed.
Inventor Contact Our researchers and inventors are mindful that confidentiality is essential to intellectual property protection. They are asked to speak with UR Ventures staff before discussing their research with potential collaborators or other parties.
We also make our researchers and inventors aware that if a decision is made to seek patent protection, the patent process tends to be lengthy and involves time-sensitive deadlines. We also let them know that throughout the process we will enlist their assistance to ensure that requirements are met in a timely and cost effective manner. However, it is understood that all decisions and instructions will be transmitted through the IP Team and that pre-approval from the IP Team is required prior to direct (personal, electronic, telephone) contact with inventors if such contact will involve billable time and/or substantive discussion.
Please do not copy inventors on routine patent correspondence unless expressly requested by the IP Team.
Abandonment Instructions to abandon will be confirmed in writing by the IP Team and will include
details of the following: Unless otherwise indicated, we will abandon passively, i.e. by failure to respond (to an
office action, fee payment, examination request) In the absence of specific instructions to abandon, outside counsel should take all
necessary action to keep the application pending Please minimize costs when attending to abandonment instructions Where appropriate, please request payment refund When foreign associates are involved, please instruct accordingly
Target Deadlines Please provide target deadlines when deadlines are optional or in cases in which there
is no stated deadline.
6 | P a g e
General
Patentability Analysis We recognize that patentability analysis is a necessary part of claims drafting and strategy however, absent a specific request to do so, please do not prepare a formal analysis or report.
Applications and Filing Fees The approval to pay fees typically associated with the filing of a patent application or responses is considered implicit in our filing instructions.
7 | P a g e
99999
US Patent Application Preparation & Filing
Drafting and Preparation of Provisional and Utility Applications (see Appendix A for additional details)
Scope & cost parameters should be discussed with the IP Team Billing is not to exceed the targeted cost without specific approval for a variance from the
IP Team
Sequence Listings
Do not prepare or submit in the provisional application
Formal Drawings we will provide an editable electronic copy whenever possible contact IP Team prior to incurring drafting fees
Government Compliance confirm existence or absence of extramural funds used by the inventor(s) at each filing
stage All US patent applications and any patent issuing thereon require the following clause
within the specification in accordance with Bayh-Dole under 37 CFR 401.14(a)(f)(4) (No exceptions or variations of the language are permissible):
This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.
Information Disclosure Statements (IDS) Request references directly from inventor(s); include gentle reminder of time sensitivity
and cost to obtain references from a third-party vendor If inventor cannot or doesn’t provide references within a reasonable time frame, please
contact the IP Team. We will obtain the references directly from our campus libraries. Please provide +/- one week to allow ample time for us to obtain and forward the references for timely filing the IDS.
8 | P a g e
US Patent Application Preparation & Filing
Assignments and Declarations Please contact inventors directly (and copy TechTransfer) with instructions for
completing Assignment and Declaration documents. Assignments are made to:
University of Rochester 601 Elmwood Ave., Box URV Rochester, NY 14642
Please notify Tech Transfer when the assignment documents have been executed. Please report Recordation of assignments via email and include the recordation date,
reel/frame, and assignor/assignee names. Obtain and record assignments at the provisional stage and PCT stage; if no PCT filed,
obtain and record assignments for US utility and for foreign applications if necessary
Micro-Entity Status New applications Pursue Micro-entity status on the basis of assignment to an institution of higher
education unless the IP team notifies you otherwise
Complete US patent applications to reflect the inventor(s) as Applicant(s) and the University of Rochester as the Non-Applicant Assignee
Prepare and forward Micro-Entity certification form to the inventor(s) for signature in advance of filing a new application (cc: techtransfer) and file certification form along with the application.
If unable to obtain signed certifications by inventors prior to filing, file without paying fees OR file as small entity
Do not request Powers of Attorney for patent applications filed as micro entity status. [If a power of attorney is required during prosecution (e.g., for terminal disclaimer), we will decide at that time whether to obtain a POA from the inventor applicants or abandon micro entity status].
When there appears to be an assignee other than UR for an application, please discuss with IP team whether the other assignee also qualifies for micro entity status before preparing and filing micro entity certification form.
Pending Applications When filing a response in a pending application that has not previously been designated
as micro-entity status but appears to qualify for such status, please discuss changing status with the IP Team.
In applications filed after 9/16/2012 that name the RU as applicant, we will not pursue micro entity status.
9 | P a g e
US Patent Application Preparation & Filing
Powers of Attorney Must be case-specific; we do not sign general powers of attorney Will be executed upon completion of inventor assignment or notification of assignment
recordation Please provide an editable PDF so that we can insert the appropriate name and title of
an available authorized signer. Do not request/file POAs for provisional applications
Provisional Patent Applications
Inventor Assignment Required
Draft Review
We expect a completed application to be filed at the USPTO no longer than 90 days from URV request to prepare draft application. Please allow time for IP Attorney review before filing.
Reporting Please forward the electronic acknowledgment receipt to us via email upon filing a
provisional application, or as soon as practical. A reporting letter should follow by email with the following attachments: application as-filed AND specification in WORD format Application data sheet Application cover sheet Specification & claims Figures, drawings Please email the official filing receipt as an attachment when it’s received
Conversion Send email reminder at 10th month only Absent instructions from the IP Team at the 11th month, please provide a second
reminder via email.
10 | P a g e
US Patent Application Preparation & Filing
Non-Provisional Patent Applications
United States
Utility 35 USC 111(a) (non-PCT), Utility 35 USC 371(PCT-US national phase), Continuations, CIPs & Divisionals
Inventor Assignment Required for non-PCT US applications
Filing Please advise IP Team if an expedited process (e.g. patent highway) is recommended Please forward the electronic acknowledgment receipt to us via email upon filing a
provisional application, or as soon as practical. A reporting letter should follow by email with the following attachments: application as-filed AND specification and claims in WORD format Application data sheet Application cover sheet Figures, drawings Please email the official filing receipt as an attachment when it’s received
Foreign Filing deadline to claim priority from the non-provisional Please send reminder at 10th month only
Missing Parts File assignments, sequence listings, etc. and notify us of response When formal drawings are requested, please correct only figures/drawings specifically
objected to For 371 applications, forward the Completion of Requirements Notification and the
Official Filing Receipt to us as email attachments.
Status Inquiries Do not file unless we specifically request
11 | P a g e
Patent Prosecution – US Utility & US National Phase
Restriction and Election of Group and/or Species Requirements Within one week of receipt: report occurrence via email to TechTransfer; attach the
Action and pending claims; If we do not provide instructions to respond within one month of Restriction date, please
contact TechTransfer by email.
Office Actions Within one week of receipt: report occurrence via email; attach the OA , pending
claims, cited references
Within 2-4 weeks: URV IP attorney will provide instructions to prepare an analysis or a response
Copy TechTransfer and IP Attorney on all communications with inventors Please send draft response to IP Team for review prior to filing response
Final Office Actions Within one week of receipt: report occurrence via email; attach the OA , pending
claims, cited references IDENTIFY the Action as FINAL in the subject line of the email.
Within 2-4 weeks:URV IP attorney will provide instructions to prepare an analysis or a response
Our preferred practice is to respond to Final Office Actions within the two month deadline to provoke an Advisory Action
Continuations-CIPs-Divisionals Decision to file made by IP Team on a case-case basis.
Publications Report publication number and date via email. Do not attach the published document
12 | P a g e
Patent Prosecution – US Utility & US National Phase
Notice of Allowance & Issue Fee Notification Upon receipt of the Notice of Allowance, send copy of allowed claims to IP Team Identify any claims previously cancelled (as a consequence of a restriction requirement
for example) so that we can determine if additional application filing(s) is warranted Transmit the NOA and the Issue Fee Notification by email attachment Absent contrary instructions, pay the issue fee within the statutory period
Patent Term Adjustment Alert the IP Team if there is a discrepancy that warrants an analysis Do not file a Request for Reconsideration of the PTA without an express instruction from
the IP Team
Fee Address Indication Form Upon payment of the issue fee please file a Fee Address Indication form for
o Customer #95632 o University of Rochester o Reid K. Cunningham o Practitioner Registration No. 38420
US Issued Patent Proofread issued claims Send ONE original ribbon copy to URV by mail; no additional paper copies are required
however; please send a PDF copy of the issued patent document to the IP Team URV will send the PDF copy of the issued patent document to the inventors
electronically Do Not Send: reminders of option to file reissue application within 2 years of patent issue
date
13 | P a g e
Annuities & Maintenance Fees UR Ventures is responsible for payment of required fees through a third party vendor, Computer Packages, Inc. (CPI). On a quarterly basis, URV will provide a report to the law firm with a list of cases for which instructions were made to pay or abandon. Please notify the IP administrator if there are discrepancies with your records, particularly if there is an instruction to abandon a case and you have not been informed of abandonment instructions.
United States Issued Patents URV will docket and pay the 4th, 8th, 12th year payments to maintain the issued patent
PCT National Phase Applications (non-US) URV will pay the foreign application maintenance fees including those due at the time of
national phase filing and all subsequently due payments Please make note of this in your foreign filing instructions to the non-US associates so
as to avoid payment duplication Please indicate if any annuities were paid/ and or the next annuity payment due date as
reported by the foreign associate to you at the time of application filing/entry. We do not prepay annuities in China. All fee payments will be made at time of patent
grant.
14 | P a g e
PCT Applications
Chapter I Applications
Inventor Assignment Required
Drafting Provide draft of PCT application to IP attorney before filing
Filing Search authority choice by mutual agreement of IP Team and counsel Receiving office should be USPTO A reporting letter should follow by email with the following attachments:
o application as-filed and o specification and claims in WORD format o PCT Request o Description o Figures, drawings
Please forward the Notification of the International Application number and International Filing Date as an email attachment when it is received
Nationalization Send email reminder at 28th month only Absent instructions from the licensing manager at the 29th month, please provide a
second reminder via email.
Routine PCT Notifications – No Response Required Extranet users: Report receipt of notification via email when the notifications are
available to us at the extranet. If no extranet, please attach the document(s).This applies to the following notices:
Receipt of Record Copy ▪ Payment of Prescribed Fees ▪ Receipt of Search Copy Submission or Transmittal of Priority Document ▪ Communication of the International Application ▪ Information Concerning Elected Offices Notified of their Election ▪Communication in Cases for Which no other Form is Applicable
15 | P a g e
PCT Applications
Publication Report notification of publication via email with the publication number and date. Do not
attach the published application.
Invitations- Response required
Invitation to Correct Defects Please respond as appropriate; inform IP Team if substantive Please attach the document to the email.
Invitation to Pay Additional Fees (lack of unity of invention) Do not pay additional fees. Restrict the search to the first claimed invention, unless IP Team instructs otherwise. please attach the document to the email.
International Search Report ISA Written Opinion (International Preliminary Report of Patentability)
Transmittal of the International Search Report or the Written Opinion please attach the document to the email.[for IP attorney review in making np filing
decisions} [Compare art and prepare an IDS for US application if necessary (parallel, co-pending
US application] No further analysis necessary No response necessary; unless otherwise advisable at the PCT stage Do not file Article 19 Amendment(s)
Supplementary International Search available since 2009
We will not request a supplementary search
Publication of Application Report notification of publication via email with the publication number and date. Do not
attach the published application.
Chapter II Demand OTT will not request examination under Chapter II.
16 | P a g e
National Phase Applications
Inventor Assignment if Necessary
United States 35 USC 371, Europe, other Foreign filed from PCT
Decisions to file rest with the IP Team
Application Revisions Draft amended claims drafts (to conform with relevant local law and/or reduce excess
claims) PRIOR to filing or prior to paying claims fees; provide draft to IP Team for review
Filing Please forward the electronic acknowledgment receipt to us via email upon filing a non-
provisional application, or as soon as practical. A reporting letter should follow by email with the filing particulars attached. The filing particulars should include: Application data sheet Application cover sheet Specification & claims Figures, drawings Please email the official filing receipt as an attachment when it’s received
Missing Requirements File assignments, sequence listings, etc. and notify us of response For 371 applications, forward the Completion of Requirements Notification and the
Official Filing Receipt to us as email attachments.
Status Inquiries Do not file unless we request
17 | P a g e
National Phase Prosecution Restriction and Election of Group and/or Species Requirements
Within one week of receipt: report occurrence via email to TechTransfer; attach the Action and pending claims;
If we do not provide instructions to respond within one month of Restriction date, please contact TechTransfer by email.
Office Actions – Examination Reports Within one week of receipt: report occurrence via email; attach the OA , pending
claims, cited references Within 2-4 weeks:URV IP attorney will provide instructions to prepare an analysis
or a response Please send draft response to IP Team for review prior to filing response
Country Specific Instructions-Europe
Europe- Upon entry into EP national phase as designated office (PCT Ch. I) Request examination and pay examination fee at time of entry Reduce claims to 15 or less at time of entry Amend/delete method of treatment claims at time of entry Notify IP Team of potential invention issues and amend/file divisional as warranted
EP national phase application where EPO was not the international search authority
Rule 161/162 letter Report occurrence Do not respond unless mandatory response required OR unless voluntary amendments
are recommended Notify IP Team with your recommendation to amend so that amendments are
considered in the supplementary EP search
Extended EP search report (required if EPO ≠ ISA) Supplementary EP Search Report and EP Search Opinion Within one week of receipt: report occurrence via email; attach the search report and
opinion, pending claims, cited references Prepare analysis or response to SR and WO upon receipt of instructions from IP Team Notify us when the Response and Direction to Proceed is made and attach the
documents via email
18 | P a g e
National Phase Prosecution Invitation to Proceed with Examination Always proceed unless directed otherwise by the IP Team
Hong Kong Please provide one email notification of opportunity to file in Hong Kong No additional reminders necessary Do Not File in Hong Kong without explicit instruction
EP Validation Countries Request instructions from the IP Team
Country Specific Instructions- non European
Non-Euro Foreign national phase filings: Please notify us of requirements on a case-case basis:
Power of Attorney Assignments Translations Excess Claims Fees Examination Requests
19 | P a g e
Licensed Technologies If we license a technology during patent prosecution you will be notified by the IP Team
Notification will be in writing via email. If agreement terms require it, we may occasionally instruct your office to copy other
parties; however, as a routine practice, our office will attend to notification requirements We will notify you if the licensee is considered a large entity as defined by USPTO;
please file a notification of loss of small entity status if required. and advise us if payment of a fee deficiency is necessary.
20 | P a g e
Billing and Invoices It is our strong preference to be billed for work that has been completed. Please do not bill work in progress.
Transmission Prior to the 15th day of the month Via email only (no paper copies) Separate billing is required as follows:
o UR reference numbers : # - # # # # # - # # # # # (“RC” technologies) Send to: [email protected]; copy: [email protected] o UR reference numbers: 6 - # # # # (“MC” technologies) Send to: [email protected]; copy: [email protected]
Format
Summary Sheet a.k.a. “Billing Summary”, “Invoice”, Essentially: reflects
o Total Services o Total Disbursements o Grand Total Amount Due
Identified by: o A single reference number – which also identifies each of the matters being billed
on the itemized charges which are grouped under the summary
Itemized Charges For every matter on the Summary Sheet, we require:
the matter information: your reference no., our reference no., technology or patent title and relevant application number, etc.
a list of the itemized services and/or disbursements the billing professional and rate. Description of the service* and the number of hours and/or Description of the disbursement
*The service must be adequately described. If the service was provided by a foreign associate, please describe the service or attach the foreign associate’s billing document. We cannot accept a charge described only as a “foreign associate charge” for example.
21 | P a g e
Billing and Invoices
Example Checklist for Itemized Charges Billed to: University of Rochester Invoice Date: May 31, 2013 Invoice Number: xxxxxx Client Number: xxxxxx Re: Matter details Itemized Services Date Attorney Decription Hours 5/18/13 ABC Lorem ipsum dolor sit amet, consectetur .50
adipiscing elit. Aenean laoreet ligula sit amet 5/21/13 DEF Nunc suscipit augue nec tellus mollis et .10 5/25/13 ABC suscipit elit imperdiet. Donec nec tortor sodales .75
auguevehicula in, hendrerit eu eros. Cras facilisis it amet dui pharetra a suscipit elit imperdiet.
ABC (name) 1.25 hours @ 190.00 190.50
DEF (name) .10 hours @ 200.00 20.00
Professional Services $210.50
Itemized Disbursements 5/25/13 Long distance telephone calls 6.75
Disbursements 6.75
Total this matter $217.50
22 | P a g e
APPENDIX: APPLICATION DRAFTING AND PREPARATION Attorney/Agent Guidelines for Preparation & Prosecution Potential Bar Dates Verify with the inventor(s) any dates and activities that might affect patentability in the US or in other countries. The disclosure comments may make reference to a publication or other public disclosure date. Such dates in the disclosure comments should NOT be considered decisive Consult with the inventor and/or the IP Team to confirm any such dates.
Copyright Notice Some software applications require a Copyright Notice. In such cases the following statement is to be included as the first paragraph of the patent application: COPYRIGHT NOTICE A portion of the disclosure of this patent document contains material which is subject to copyright protection. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all copyright rights whatsoever.
Title Use the perspective of a person only generally familiar with basic science. The application title need not match the title used in the ID.
Section Titles • Never refer to “the invention,” as in “Summary of the Invention.” • Do not use the heading of “Prior Art.” • Use general titles like Background, References, Summary, and so on.
Incorporation by Reference If you intend to incorporate by reference, use the phrase “The disclosure of which is incorporated herein by reference in its entirety.” Consider incorporating related pending applications and any pending applications or applications filed the same day that are recited in the application.
23 | P a g e
APPENDIX: APPLICATION DRAFTING AND PREPARATION Attorney/Agent Guidelines for Preparation & Prosecution Background In general, the description of the background should be brief. When deciding how much “background” to describe, be aware of: • admitting something is prior art • giving the Examiner a road map to why the invention is “obvious” or • mischaracterizing a reference - Fully identify the reference, but the less discussion about what is or is not allegedly in a cited reference, the better. Do not set forth specific “objects” of the claimed invention. If you know the application will be foreign filed, provide in the specification, preferably in the introduction, at least one problem and a solution. This is necessary for foreign filing, but it can limit the US claim if not carefully presented.
Information Disclosure Generally any references recited in the invention disclosure file, must be cited on an IDS; do not take the chance that it will be held irrelevant. Do not omit art mentioned in the disclosure without reviewing with the inventors or based on compelling and documented reasons. All art should be listed on the proper USPTO form and submitted with the Application with a copy of the reference submitted if it is not a US patent or application.
Summary The summary can simply restate each independent claim in paragraph form. A good introduction to each paragraph is “According to aspects illustrated herein, there is provided an apparatus…” Or, “One disclosed feature of the embodiments is...” Change “said” to --the-- in these claim paragraphs.
24 | P a g e
APPENDIX: APPLICATION DRAFTING AND PREPARATION Attorney/Agent Guidelines for Preparation & Prosecution Detailed Description Never refer to anything as the “invention.” Avoid words in the description that can limit the claims, such as: critical, essential, key, primary, important, consisting of, consisting essentially of, preferably (prefer, preferred), solely, vital, chief, steps, surprising, main, and significant. Avoid characterizing any embodiment as preferred over any other. When reporting experiments, use “about” or “approximately” as much as possible. Use “for example.” Ask the inventors if they have performed the experiment. If they have not, put the example in future or present tense. Don’t use the word “preferred” for ranges. Always describe at least three ranges for ranges that may be part of the claim. “In embodiments, the amount of component A selected is, for example, from about --to about-- or from about --to about --.” The presence of what may be “boilerplate” to us is important to both District Courts and most CAFC panels. Use this proper boilerplate example just before the claims: It will be appreciated that variants of the above-disclosed and other features and functions, or alternatives thereof, may be combined into many other different systems or applications. Various presently unforeseen or unanticipated alternatives, modifications, variations, or improvements therein may be subsequently made by those skilled in the art which are also intended to be encompassed by the following claims. Also, as needed: The claims can encompass embodiments in hardware, software, or a combination thereof.
25 | P a g e
APPENDIX: APPLICATION DRAFTING AND PREPARATION Attorney/Agent Guidelines for Preparation & Prosecution
Claims Draft multiple independent claims of differing scope. Always try to include three (3) independent and twenty (20) total claims. For inventions in certain technologies such as chemistry, computer software, and computer networks, consider additional claims. Contact the IP team for approval before filing more claims. Do not use multiple dependent claims. Try to include a narrow independent claim you believe is readily allowable with the first office action. Avoid “consist” or “consisting essentially of” unless this language is specifically intended and necessary to claim around prior art. Otherwise, use “comprise,” or “comprising.” Recent case law suggests that use of the phrase “operatively connected,” is preferred over “connected,” “engaging,” “on,” or “abutting,” all of which can lead to infringement design-arounds by adding intermediate (interposed) parts or layers. With method claims, say, “A method… comprising…” not “comprising the steps of …” Be sure there is support and backup for every word used in the claims. Note important claim terms that are likely to be called into question in a Markman hearing, and define them broadly in the Specification with backup options. Generally avoid using “means/function” claim language, except as an addition to some non-means claims. If means/function claim language is used, make sure that specific structures in the Specification are linked to each function recited in means/function claim language. For example, a spring can be called “resilient means” (note the lack of a noun) and described as “resilient means may include a leaf spring, coil spring, and/or any structure exploiting tension and/or compression of matter.” In addition to defining claim terms, phrases of common words used as claim terms (e.g., “error compensation module”) should be defined explicitly in the description, with an eye to surviving translation and getting over the technical requirements in Japan and Europe. For example, “As used herein, an ‘error compensation module’ shall include any software, hardware, or combination thereof that receives an error signal and causes the control system to compensate for the measured error.”
26 | P a g e
APPENDIX: APPLICATION DRAFTING AND PREPARATION Attorney/Agent Guidelines for Preparation & Prosecution
Foreign Filing While revising the application for foreign filing, US Outside Counsel is to consider the following: • Remove all section headings, title pages, and standard paragraphs before the examples and claims • Remove all boilerplate - retain only one feature of the disclosure • Minimum prior art; include only one to two relevant references • Remove all incorporations by reference, including all references to pending applications • Delete the abstract Authorization is to be obtained from IP team for additional claim count. • Eliminate generic or background drawings that are not necessary for describing the invention • Be sure that you have full support in the specification for all possible subject matter or claims that you may wish to add later
Prosecution In amendments, if at all possible, avoid non-substantive changes to claims, and state in Remarks that the change is non-substantive, formal, or that the claims are being “clarified.” Arrange each claim in multiple separate paragraphs to clearly delineate the elements, and amend as few such paragraphs as possible. This may limit any estoppel effects of amendments. It is preferred that Amendments be submitted to the USPTO within TWO months of receipt of the Final Office Action. Conferring with the inventor(s) is not necessary, but you may do so if you think it will be helpful. You may conduct telephone interviews with the Examiner to speed prosecution. When a search report is received in a corresponding foreign application, the report must be timely filed with the USPTO for those applications where the issue fee has not yet been paid.
Joint Assignees - Inventors Other than from UR If an Invention Disclosure indicates inventorship other than University of Rochester, and a determination is made that they will be inventors on the patent application, it is imperative that Assignee information is recorded properly. Contact the IP Team for Assignee information.
27 | P a g e
APPENDIX: APPLICATION DRAFTING AND PREPARATION Attorney/Agent Guidelines for Preparation & Prosecution
Uncooperative Inventors If you are unable to contact an inventor or if the inventor is uncooperative, first contact the IP Team. If efforts to obtain the inventor’s cooperation are unsuccessful, follow these guidelines:
• Document all attempts to contact the inventor • File the patent application without the formal papers (you will eventually receive a Notice to File Missing Parts from the USPTO) • Send a letter or email to the inventor, similar to the following:
Dear ____: Since we have not heard from you despite a number of previous communications relating to this case, we proceeded with the filing of a patent application without your signature, and that you are legally obligated to provide. The U.S. Patent Office requires that we file formal papers signed by each inventor even after the patent application is filed. Please contact us within the next ten (10) business days from the date of this letter to make arrangements for your signature. If we do not hear from you by then, we must advise the U.S. Patent Office by Petition that you would not sign, thus citing you as an uncooperative inventor. We look forward to hearing from you. Send a copy of this letter to the IP team. If you do not hear from the inventor within ten (10) days of your letter, refer to 37 CFR 1.47 and file the appropriate papers with the USPTO.
Verification of Inventor Name - Formal Paper Consistency It is the responsibility of the US Outside Counsel to verify inventor legal names and to ensure that inventor names are consistent on all formal papers and the Application Data Sheet. Foreign countries are very particular about these inconsistencies when filing abroad. If inconsistencies are found, it is the responsibility of the US Outside Counsel to perform these corrections at no cost to UR Ventures
28 | P a g e
A
Abandonment, 5 Annuities & Maintenance Fees, 17 Application Revisions, 20 Applications and Filing Fees, 6 Assignments and Declarations, 9 ATTORNEY/AGENT GUIDELINES FOR
PREPARATION & PROSECUTION, 28, 29, 30, 31, 32, 33
B
Background, 29 BILLING AND INVOICES, 25, 26
C
Chapter I Applications, 18 Chapter II Demand, 20 Claims, 31 Contact Information, 3 Continuations-CIPs-Divisionals, 14 Conversion, 11 Copyright Notice, 28 Correspondence – Attachments, 4 Correspondence – Content, 4 Correspondence – Delivery & Addressees, 4 Country Specific Instructions- non European, 22 Country Specific Instructions-Europe, 21
D
Detailed Description, 30 Draft Review, 10 Drafting, 7, 18 Drafting and Preparation of Provisional and
Utility Applications, 7
E
EP national phase application where EPO was not the international search authority, 22
EP Validation Countries, 22 Europe- Upon entry into EP national phase as
designated office (PCT Ch. I), 21 Extended EP search report (required if EPO ≠
ISA), 22
F
Fee Address Indication Form, 16 Filing, 6, 12, 18, 20 Final Office Actions, 14 Foreign Filing, 32 Formal Drawings, 7
G
GENERAL, 3, 4, 5, 6 Government Compliance, 7
H
Hong Kong, 22
I
Incorporation by Reference, 28 Information Disclosure, 29 Information Disclosure Statements (IDS), 7 International Search Report, 19 Introduction, 2 Inventor Contact, 5 Inventor Information, 5 Invitation to Correct Defects, 19 Invitation to Pay Additional Fees (lack of unity of
invention), 19 Invitation to Proceed with Examination, 22 Invitations- Response required, 19
J
Joint Assignees - Inventors Other than from UR, 32
L
Licensed Technologies, 24
M
Micro-Entity Status, 9 Missing Parts, 12, 33 Missing Requirements, 20
29 | P a g e
N
National Phase Applications, 20 National Phase Prosecution, 21, 22 Nationalization, 18 Non-Euro Foreign national phase filings, 22 Non-Provisional Patent Applications, 12 Notice of Allowance & Issue Fee Notification, 16
O
Office Actions, 14, 21
P
Paralegal and Administrative Staff, 4 PATENT PROSECUTION – US UTILITY & US
NATIONAL PHASE, 14, 16 Patent Term Adjustment, 16 Patentability Analysis, 6 PCT APPLICATIONS, 18, 19 PCT National Phase Applications (non-US),
17 Potential Bar Dates, 28 Powers of Attorney, 9, 10 Prosecution, 32 Provisional Patent Applications, 10 Publications, 14, 19
R
Reporting, 10 Restriction and Election of Group and/or
Species Requirements, 14, 21
Routine PCT Notifications – No Response Required, 18
Rule 161/162 letter, 22
S
Section Titles, 28 Sequence Listings, 7 Status Inquiries, 13, 20 Summary, 29 Supplementary International Search, 19
T
Target Deadlines, 6 Title, 28
U
Uncooperative Inventors, 33 United States 35 USC 371, Europe, other
Foreign filed from PCT, 20 United States Issued Patents, 17 US Issued Patent, 16 US PATENT APPLICATION PREPARATION &
FILING, 7, 9, 10, 12
V
Verification of Inventor Name - Formal Paper Consistency, 33
