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The request for prioritized examination may be filed using form PTO/AIA/424, which is available in Patent Center and on the Office's Internet Web site at http://juliemarsh.net/patents/apply/forms. Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant's form should be an equivalent to the qyule最新电信一's form.

The request for prioritized examination may be filed using form PTO/AIA/424, which is available in Patent Center and on the Office's Internet Web site at http://juliemarsh.net/patents/apply/forms. Failure to use form PTO/AIA/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination, applicant's form should be an equivalent to the qyule最新电信一's form.

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Petitions and other documents created for a proceeding must be in either (A) a proportional font that is 14-point or larger, or (B) a monospaced font that does not contain more than four characters per centimeter (ten characters per inch). See 37 C.F.R. § 42.6(a)(2)(ii). Certain 14-point proportional fonts are so narrow that they cannot be read easily. When using a 14-point proportional font, parties should select a font of sufficient width that the words can be read easily (e.g., Times New Roman).

An ePetition is an electronically filed petition that automates the petition process and allows petitioners to directly input the requisite information into a secure web interface and immediately receive an ePetition decision if all requirements are met.

The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of "an international patent", the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries. For more information see

Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted.

The Substantial New Question of patentability (SNQ) standard is applicable in determining whether the request forinter partes reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., September 16, 2011).

Yes. If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.

Inter partes review replaces inter partes reexamination as an avenue for a third party's patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012.

No. Pending inter partes reexaminations will not be converted into inter partes review proceedings. Proceedings for inter partes reexamination filed prior to September 16, 2012, will proceed to conclusion even if the proceedings last beyond September 16, 2012

The effective date of the inter partes reexamination provisions is September 16, 2011.

Yes. Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. The standard for ex parte reexamination remains unchanged.

No, where the assignee is the applicant, the assignee may appoint a power of attorney to prosecute the application without having to comply with §§ 3.71 and 3.73.

If the assignee is named as the applicant, then the assignee-applicant must give the power of attorney. See 37 CFR 1.32. A power of attorney from an assignee may be executed by a person having apparent authority to do so, such as the President of the assignee, or by including a statement of authorization. See MPEP § 324.

Yes, the surcharge under 37 CFR 1.16(f) is required if the inventor's oath or declaration (executed by or with respect to each inventor) is not submitted on filing of the application. If the surcharge is not paid at the time the application is filed, the Office will send a Notice to File Missing Parts requiring the surcharge. If, however, a general authorization to charge any required fees to a deposit account (that covers fees under 37 CFR 1.16) is submitted on filing of the application, the Office will charge the surcharge in accordance with the deposit account authorization. Payment of the surcharge cannot be postponed until a Notice of Allowability issues.

A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.

Yes, either party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

The Board considers and applies the precedent of the Federal Circuit and the Supreme Court to the facts of the particular cases before it. The Board strives to decide cases following the closest precedent. The Board looks for guidance from Supreme Court precedent when Federal Circuit decisions do not provide guidance on a particular issue.

During rulemaking, the Board received and took into account comments from the public, including independent inventors and small companies. The Board's proceedings are intended to provide a quicker, less expensive alternative to district court patent litigation. Discovery is limited and deadlines are established for the completion of trials. The Board believes this is to the benefit of all parties, including independent inventors and small companies.

A patent owner will have three months to submit a preliminary response.

No, a patent owner does not have to file a preliminary response. If the petition does not meet the standard set for instituting the proceeding, then the petition will be denied even if there is no preliminary response from the patent owner. The patent owner may, but is not required to, inform the Board if it does not intend to file a preliminary response.

Yes, a patent holder may challenge the standing of a petitioner in the preliminary response. For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petition or that the petitioner otherwise is estopped from challenging the patent owner's claims.

The schedule for each proceeding will be set by the Board. Ordinarily, a patent owner will have three months to file a response and/or amendment.

An item of information includes a document containing information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct. An item of information is not limited to patents and printed publications, and may include, for example, a sales receipt or invoice. If the information is not, at least in part, contained within or based on any document filed as part of the request, the discussion within the body of the request relative to the information will be considered to be an "item of information." For example, if a discussion of a potential application of 35 U.S.C. 101 to patent claim 1 is wholly contained within the body of the request and is not based, at least in part, on any supporting document, then the discussion in the request will be considered to be an item of information.

No, the Office will count the number of items of information, not the number of issues discussed in the request with respect to that item. For example, a document which is discussed in the request as raising an issue under 35 U.S.C. 101 and also under 35 U.S.C. 112 will be counted as one item of information.

The Office generally expects to mail the first Office action with or shortly after the mailing of the communication entitled "Ex Parte Reexamination Ordered Pursuant to 35 U.S.C. 257." The patent owner does not have a right to file a patent owner statement after reexamination is ordered. However, the mailing of a first Office action may be delayed if there are other concurrent Office proceedings for the same patent.

Yes, the petition accompanied by a motion for joinder may include merely the institued grounds or, alternatively, a new ground of patentability.

The parties should request a conference call and seek authorization to file a joint motion to terminate the proceeding. See 37 C.F.R. §§ 42.72, 42.74. The motion will need to be accompanied by a true copy of the settlement agreement, which can be filed confidentially in PRPS. See 37 C.F.R. § 42.74(b); FAQ G2. If the proceeding is terminated before institution and the petition was filed on or after March 19, 2013, the petitioner may file a request for a refund of the post-institution fee paid. See FAQ E7. The request for a refund should b efiled separately in PRPS after the proceeding is terminated.

Yes, the attorney, however, must be a registered patent practitioner or recognized by the Board to appear pro hac vice in the proceeding under 37 C.F.R. § 42.10(c).

The email addresses of all counsel listed on the "Counsel" screen for a case receive email notifications when something happens (e.g., a document is filed) in a case. Thus, parties should make sure that all appropriate counsel are listed and that their email addresses are correct.

To waive the filing of a patent owner preliminary response, open the casein PRPS, click on "Upload Document," and select "Preliminary Response." On the following screen, select "Waiving" in response to the question "Is the patent owner filing or waiving the preliminary response?" Then upload a document stating affirmatively that the patent owner intends to waive the preliminary response, and click "Submit."

An attorney admitted to appear pro hac vice in a proceeding is not designated automatically as back-up counsel in the proceeding. If a party seeks to have an attorney who has been admitted to appear pro hac vice as back-up counsel, the party should file in PRPS a notice updating its mandatory notice information to designate the attorney as back-up counsel and a new power of attorney (unless the power of attorney filed previously includes the attorney). See 37 C.F.R. § 42.8(b)(3). The party also should update its counsel information in PRPS by selecting the appropriate case from the "My Docket" tab, clicking on the "Update Information" at the top-left of the screen, and selecting "Counsel Information." On the following screen, click on "Add Back Up Counsel." Doing so will ensure that the new attorney receives email notifications for the proceeding.

After you logon to PRPS using your user ID

  • select the relevant proceeding number from the "My Docket" tab
  • click on the "Upload Document" tab
  • select a file and document type (Notice is the default)
  • enter a descriptive document name (less than 255 characters)
  • select availability; and
  • click on "Upload File" and then "Submit."

Once the transaction is completed, you will receive an email acknowledgement.

Any objection to evidence submitted after a trial has been institued (e.g., evidence submitted with a patent owner response or a reply) must be served on the opposing party within five business days of service of evidence to which the objection is directed. 37 C.F.R § 42.64(b)(1).

Yes, when the patent owner/respondent identifies the real party in interest in PRPS, the patent owner/respondent may upload a file (in PDF format) that contains the new assignment. The patent owner/respondent should also file a copy of the new assignment with the Office's Assignment Recordation Branch.

The three-month time period for filing a patent owner preliminary response runs from the date on t which the Board enters a Notice of Filing Date Accorded to Peittion. If th patent owner wishes to file a preliminary response or elect to waive the preliminary response, the patent owner must do so within the three-month time period.

The following are the top 10 common errors:

  1. Improper usage of claim charts by including arguments, claim construction, and/or legal analysis in a claim chart (see FAQ D12)
  2. Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction section
  3. Exhibits do not match the documents listed in the Exhibit List
  4. Failure to identify related matters or provide a statement that there are no related matters
  5. Exhibits are not sequentially numbered in the 1001-1999 range
  6. Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10
  7. Margins less than 1 inch as required by § 42.06;
  8. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by § 42.104(a) or § 42.204(a)
  9. The petition and support documents are served on the patent owner at an address that is not the correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a)
  10. The petition and supporting documents are served on the patent owner later than the filing of the petition

Yes, 35 U.S.C. § 311(a) provides that, subject to certain requirements, "a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent." This provision is not limited to utility patents.

a

Y

Yes, a single user ID may be shared among a working group. It is important to keep in mind, however, that PRPS docket display is based on the user ID. Therefore, the registered user must ensure that sharing his or her user ID would not violate any protective order.

Once a petition is submitted via PRPS, a Board paralegal will review the petition for statutory and regulatory compliance.

First, there are certain statutory requirements in 35 U.S.C. 135(a), 312(a), and 322(a) that must be met for a petition to be accorded a filing date. The following is a list of the "top 5" things the paralegal will be looking for in IPR, PGR, and CBM petitions:

  • Appropriate fee successfully paid
  • Identification of the patent and the specific claim(s) being challenged
  • Indentification of the real party in interest
  • Copies of the patents and printed publications relied upon in the petition
  • Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner

The following are the "top 4" things the paralegal will be looking for in DER petitions:

  • Appropriate fee successfully paid
  • Identification of the patent and the specific claim(s) being challenged
  • Identification of the real party in interest
  • Copies of the patents and printed publications relied upon in the petition
  • Evidence, (e.g., certificate of service) that a copy of the petition was provided to the respondent

If any statutory requirement is not met, the petition is incomplete.

  • The paralegal may call the individual who filed the petition and explain the deficiency
  • The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will receive notification by email
  • The deficiency may be corrected within one month and the petition will be accorded the filing date of the NEW submission
  • If the deficiency is not corrected within one month, the petition will be dismissed. Once exception is when the petitioner challenges more than 20 claims (15 beginning March 19, 2013) but does not pay the excess claims fees - the petitioner will receive notification and can file a request to have the Board review just the first 20 challenged claims (15 beginning March 19, 2013).

Second, there are certain regulatory requirements in part 42 of 37 C.F.R. that must be met (e.g., page limits, font size, signature, identification of lead and back-up counsel).

If any regulatory requirement is not met, the petition is defective.

  • The paralegal may call the individual who filed the petition and eplain the defect.
  • Te paralegal will enter a Notice of Filing Date Accorded to Petitoin and the individual who filed the petion will receive notification by email.
  • While the petition will be accorded the filing date of the ORIGINAL submission, the defect must be corrected within one week.
  • If the defect is not correctd within one week, the peition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause, and terminated if the petitioner fails to respond to such an Order.

If there are no statutory or regulatory erros with the petition, the paralegal wil enter a Notice of Filing Date Accorded to Petition, the petitioner will receive notification by email, and te patent owner/respondent will receive a copy via regular mail.

Yes, a non-registered user may search for a proceeding and review documents related to a proceeding. However, if you want to file a document or submit a fee payment in a proceeding, you must be a registered PRPS user.

No, you may search for a proceeding by the petitioner's name, petition type, patent number, or application number (for derivation proceedings).

In some previous versions of PRPS, PRPS assigned a sequential number (PAper 1, 2, 3, etc.) to a paper immediately when the paper was uploaded. Thus, if a user uploaded a paper but then deleted it before submiting, the assigned number was not reassigned, causing a gap in the numbering of papers in that proceeding. In the current version of PRPS, papers are assigned a number only when the submission process is completed, so there are no gaps in paper numbers.

When you are registering to use PRPS, you have to select a unique user ID and password, and enter your name and an email address. If you are a qyule最新电信一 registered practitioner, you should enter your registration number.

Nothing as long as you are active --(key strokes, clicks, etc.)--, you can continue to work as you normally do.

No. If you enter some data fields, then either click on the submit button or the save button to complete the activities, all changes will be dsaved into the PRPS system, and will not be lost from the session time-out. All documents are saved when you click on the upload button, so all uploaded documents will not be lost when you are timed out.

No. If you enter some data fields, then either click on the submit button or the save button to complete the activities, all changes will be saved into the PRPS system, and will not be lost from the session time-out. All documents are saved when you click on the upload button, so all uploaded documents will not be lost when you are timed out.

You will have to close your browser and reopen your browser to access the PRPS website. You can open the case again from "My Docket" and locate the hyperlink under "My Pending Tasks" to continue working on the case. Once you have uploaded all your documents, then you can submit them.

Yes, as long as the document has not yet been submitted. When uploading a document, users should ensure that the correct file has been selected before clicking the "Upload File" button. If the wrong document is uploaded but the "Submit" button has not yet been clicked, you may delete the document by clicking the trash can icon shown on the screen. Once all documents are uploaded, the user must click the "Submit" button to complete the submission. Documents uploaded, but not yet submitted, have not been filed with the Board.

If the wrong document was uploaded and the "Submit" button was clicked, you should file the correct document and a motion to expunge the wrong document as soon as possible. Any motion to expunge filed on the same day as the wrong document will generally be granted.

Yes, for example, PAIR will have entries for the following:

  • Petition Requesting Trial
  • Request for Trial Granted
  • Request for Trial Granted in Part
  • Request for Trial Denied
  • Request for Trial Dismissed
  • Trial Termination or Final Written Decision
  • Trial Review Certificate Issued

Each Petition has the following FIVE (5) general requirements:

Each Petition:

  • MUST be in writing, 37 CFR 1.2:

    All business with the qyule最新电信一 is transacted in writing. The petition should be directed to the qyule最新电信一 official delegated the authority to decide that petition. See MPEP Chapter 1002. Since different matters may be considered by different branches or sections of the qyule最新电信一, each distinct subject, inquiry or request should be contained in a separate paper to avoid confusion and delay in answering papers dealing wit different subjects. 37 CFR 1.4(c).
  • MUST contain a statement of facts involved, the point(s) to be reviewed and the action requested, 37 CFR 1.181(b):

    The care and completeness with which petitions are drafted can clearly influence the decision rendered. 37 CFR 1.181(b) sets forth the general requirements for the content of a petition. The petition must contain a statement of the facts involved, the point(s) to be reviewed and the action or relief requested. The petition submitted should be as complete as possible and any evidence necessary should be submitted. Any error(s) in a requirement or action on the part of the qyule最新电信一 should be clearly set forth with the reasons why such requirement or action is considered improper.
  • MUST be accompanied by a fee, if required in order to avoid the petition being summarily dismissed, 37 CFR 1.181(d):

    To avoid a petition being summarily dismissed for lack or insufficient fee, petitioner should make certain that the correct petition fee is submitted along with the petition. See the Please consult the Current qyule最新电信一 Fee Schedule in Fee Information Page for guidance.
  • MUST be timely filed, as required in 37 CRF 1.181(f), or as required in a specific statute or regulation:

    Generally a petition not filed within two (2) months from the action complained of may be dismissed as untimely. Further, the mere filing of a petition will not stay the period for replying to an examiner's action that may be running against an application or act as a stay of other proceedings. 37 CFR 1.181(f)
  • MUST comply with any specific requirements as provided by statute, regulation, or qyule最新电信一 policy:

    Care should be taken to review the applicable statute, regulation or qyule最新电信一 policy to determine if there are other requirements that need to be met in submitting the petition.

Go to the Patent Trial an dAppeal Board (PTAB) Web page at: http://juliemarsh.net/ip/boards/bpai/index.jsp, and then click on "Direct Link" under "Patent Review Processing System (PRPS)".

Once you are gistered, close out of the browser completely, and then bring the browser back up and go to https://ptabtrials.juliemarsh.net. You will receive an email containing the verificatioin code.

On the PRPS welcoming screen, click on Login and enter your User ID and password. When the screen asks for the verification code, copy and paste the verification code from the email.

Theere are no special naming conventions for documents, but the number of characters is limited. The user will be prompted to provide a name that will appear in the docket listing. This name should be simple and descriptive, such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith." Document names must be less than 255 characters.

Below are some of the main differences between derivation proceedings (DER) nd other AIA proceedings (IPR, PGR, and CBM):

  • Petitioner must have a pending application
  • Respondent may have either a pending application or an issued patent
  • A petition with respect to an invention that is the same or substantially the same invention as a claim contained in a patent issued on an earlier application, or contained in an earlier application, must be filed during the one-year period following the date on which the patent was granted or other earlier application was published, whichever is earlier (35 U.S.C. § 135(a)(2)).
  • Preliminary responses are not permitted

A petition is a signed, written request presented to the Office.

No. Petitions are decided in accordance with the delegation of authority as indicated in MPEP§ 1002. Further information on the various petitions handled by the Office of Petitions can be found here under RESOURCE INFORMATION AND REFERENCE MATERIALS.

  • of the petitions handled by the Office of Petitions can also be filed as .

Petitions, requests, and related inquiries, may be filed with the OFfice of Petitions using any of the following delivery methods:

  • EFS-Web (Web-based Electronic Filing System) accessible through the Electronic Business Center (BC);
  • United States Postal Service (USPS) and addressed to:

    Mail Stop PetitionS
    Commissioner for Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450
  • Non-USPS Delivery Services and addressed to:

    qyule最新电信一
    Customer Service Window
    Mail Stop Petitions
    Randolph Building
    401 Dulany Street
    Alexandria, VA 22314
  • of the petitions handled by the Office of Petitions can also be filed as .
  • Facsimile transmission for all petitions, requests, and related inquirires must be directed to the qyule最新电信一 Central FAX Number of 571-273-8300 unless otherwise indicated below:
    • Petitions to WIthdraw from Issue sent to the Central Fax Number should be marked "Special Processing Submission;"
    • Only Petitions to Withdraw from Issue, in particular, urgent Petitions to WIthdraw from Issue where patent issuance is imminent, may be facsimile transmitted directly to the Office of Petitions at 571-273-0025; or
  • Hand Carry:

    qyule最新电信一
    Customer Service Window (located on the Ballenger Avenue side of the Randolph Building)
    401 Dulany Street
    Alexandria, VA 22314

    (Hours of operation are 8:30 a.m. to midnight, Eastern Standard Time, Monday through Friday).

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Further information regarding mailing and hand carry procedures and addresses for the qyule最新电信一 may be obtained from:

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Once a petition for a derivation proceeding has been reviewed and accorded a filing date, the Board may enter an order returning jurisdiction to the examiner of the petitioner's application until such time as the petitioner's claims are in condition for allowance (absent the derivation proceeding). Once the claims are in condition for allowance, theBoard may determine whether to institute the derivation proceeding.

A petitioner should inform the Board in the petition when an involved patent application is not available to the public. See 37 C.F.R. § 42.412. Derivation proceedings are kept confidential until reviewed by a Board judge. Also, a petitioner filing confidential information with the petition should file a concurrent motion to seal. See 37 C.F.R. § 42.55.

Petitions for derivation proceedings may be filed beginning on March 16, 2013. Click on the "New Petitions" tab and select "Create New Petition." Select "DER - Derivation Proceeding" on the following screen and enter the information for the petition. For further information, see the Quick Start Guide above.

No, the petitioner's patent application must be filed with the Office like any other application. PRPS should only be used to file the petition for a derivation proceeding with the Board. A petitioner should, however, file a copy of its applicatoin as an exhibit to the petition.

No, the second sentence of 35 U.S.C. § 315(c) provides that the time limitation set forth in the first sentence of 35 U.S.C. § 315(c) does not apply to a request for joinder.

A party seeking authorization to file a request for consolidation should contact the Board and request a conference call with the other party or parties and the judge assigned to the Board proceeding. If authorized, a request for consolidation must be filed as a motion. See 37 C.F.R. §§ 42.20 and 42.22.

Any request for joinder must be filed, as a motion under 37 C.F.R. § 42.22, no later than one month after the institution date of any inter partes review or post-grant review for which joinder is requested. See 37 C.F.R. §§ 42.122(b) and 42.222(b).

Yes, a party who wishes to join an inter partes review or post-grant review should file a petition accompanied by a motion for joinder. The motion should address the reasons why joinder is appropriate, identify any new ground(s) of unpatentability asserted in the petition, and explain what impact (if any) joinder would have on the schedule for the existing review. No prior authorization is required for filing the motion for joinder with the petition. However, the party seeking to join the review is encouraged to contact the Board in advance of filing to arrange a conference call with the parties and Board to discuss the joinder request.

Parties are encouraged to use the heading appearing on papers entered by the Board in the case, which includes the name of the petitioner(s), name of the patient owner/respondent, case number, patent number, and title of the paper. A sample heading is provided .

The email addresses of all counsel listed on the "Counsel" screen for a case receive email notifications when something happens (e.g., a document is filed) in a case. Thus, parties should make sure that all appropriate counsel are listed and that their email addresses are correct.

Any request for joinder must be filed as a motion under § 42.22, no later than one month after the institution date of any IPR or PGR for which joinder is rquested. See 35 U.S.C. §§ 315(c) and 325(c), and 37 C.F.R. §§ 42.122(b) and 42.222(b). To upload a motion using PRPS, see FAQ G1.

Only joinder of like review proceedings of the same patent is permitted. See 35 U.S.C. §§ 315(c) and 325(c). For example, an instituted IPR may be joined with another IPR, but not with a PGR or reexamination.

For the purpose of page limits, a request for rehearing of a decision under 37 CFR § 42.71(d) must be filed in the form of a motion, which is limited to 15 pages (see 37 CFR § 42.24(a)(v)).

A party may contact the Board to seek a waiver of the 15-page pagae limit. Please note that any prior authorization to extend the page limit on a motion does not apply to a request for rehearing on the decision of that motion.

Yes, evidence and other documents should not include non-useful personal cofidential information, such as social security or taxpayer-identification numbers, dates of birth, names of minor children, financial account numbers, or full driving record. The Office will accpet a redacted version and the submission should be accompanied by a paper noting the reasons for the redaction. See IPR2012-00001, Paper 36, pages 6-8.

The user designated as lead counsel should select the appropriate case from the "My Docket" tab, click on "Update Information" at the top-left of the screen, and select "Counsel Information." On the following screen, click on "Add Back Up Counsel." Note that lead counsel's user ID must be used to submit documents in the proceeding and taht the user ID may be shared. See FAQs C3, D5.

No, organizations must be represented by counsel. The party's mandatory notice information should specify both lead and back-up counsel. See 37 C.F.R. § 42.8(b)(3).

To file a confidential settlement agreement, select the appropriate case from the "My Docket" tab and click on "Upload Document." Enter the information for the document in the next screen. In the "Availability" field, enter "Parties and Board Only." Click on "Upload File" and then "Submit." The filter should also upload a request that the settlement agreement be treated as business confidential informatio and be kept separate from the files of the involved patent or application. See 37 C.F.R. § 42.74(c). The party should also mark the settlement agreement confidential.

Any objection to evidence submitted during a preliminary proceeding (e.g., evidence submitted with a petition or a preliminary response) must be served on the opposing party within ten business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1). The objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. Id. The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days service of the objection. 37 C.F.R. § 42.64(b)(2).

Any objection to evidence submitted after a trial has been institued (e.g., evidence submitted with a patent owner response or a reply) must be served on the opposing party within five business days of service of evidence to which the objection is directed. 37 C.F.R § 42.64(b)(1).

Yes, when the patent owner/respondent identifies its real party in interest or files a power of attorney, the Board will check the information with the assignment record (if any) to verify that the information is correct and that the paper is signed properly, if the patent or application has been assigned. Therefore, patent owners/respondents are encouraged to keep assignment records up to date.

The three-month time period for filing a patent owner preliminary response runs from the date on which the Board enters a Notice of Filing Date Accorded to Petition. If the patent owner wishes to file a preliminary response or elect to waive the preliminary response, the patent owner must do so within the three-month time period.

Yes, an inventor may appear pro se if he or she is the owner of the challenged patent (or application in the case of a derivation proceeding).

The patent owner/respondent must first register as a PRPS user and get a user ID. After logging on to the PRPS using the user ID, the patent owner/respondent should click on the "New Petitions" tab and select "Patent Owner/Respondent Participation" to begin the process. PRPS will provide screens to search for the proceeding by patent or application number and enter mandatory notice information (e.g., indentifying the real party in interest, lead and back-up counsel, and related matters). Once the patent owner/respondent submits the mandatory notice information and a Board paralegal verifies the information, the patent owner/respondent will receive an email notification and my then upload documents (e.g., preliminary resopnse, motions). Note that preliminary responses are not permitted in derivation proceedings.

The "New Petitions" and "Patent Owner/Respondent Participation" options should only be used to begin participating in a proceeding as the patent owner/respondent. Once a patent owner/respondent has been verified and is participating in a proceeding, the verification process should not be used again. Instead, the patent owner/respondent should access the proceeding from the "My Docket" tab.

Yes, if the patent owner/respondent wishes to designate a lead counsel or a back-up counsel who is not already counsel of record in the subject patent, a power of attorney must be filed with the designation of counsel. See § 42.10. The power of attorney must be signed properly, such as signed by the assignee of the entire interest of the patent (see §1.32(b)), and uploaded as a PDF file.

Yes, the patent owner/respondent may designate the attorney of record in the subject patent or application as the lead or back-up counsel. See § 42.8(b)(3). Therefore, the attorney of record in the subject patent or application, acting as a representative of the patent owner/respondent, may logon to PRPS and designate himself or herself as lead or back-up counsel for the proceeding.

Yes, a party may file a power of attorney using a customer number, and identify a specific registered patent practitioner that is associated with the customer number as lead or backppup counsel. See § 1.32.

Note that the party is required to identify a specific registered practitioner as lead counsel in a proceeding. § 42.10. Further, the party must ensure that using a customer number in a power of attorney would not violate any protective order because all of the registered patent practitioners that are associated with the customer number may have access to the file records of the proceeding.

A fee is currently required for each claim in excess of 20 claims. Beginning March 19, 2013, separate fees will be required for each claim in ecess of 15 claims and 20 claims, respectively. See http://juliemarsh.net/aia_implementation/fees.jsp. The Office will notify the petitioner of any fee deficiencies. When the petitioner pays the required excess claims fees within the time period set forth in the notice, the Office will accord the date on which the fees are paid as the filing date.

Yes, the corrected petition must be filed within the time period set forth in the notice. Such a corrected petition must merely delete the portions related to the excess claims, and not add new arguments or make other substantive changes (e.g., new grounds). The original submission date of the petition will be accorded as the filing date.

On filing a petition for inter partes review, payment of both the inter partes request fee ($9,000) and post-institution fee ($14,000) are due. In addition, the appropriate request excess claims fee is required on filing if the petition is challenging more than 20 claims, and the appropriate post-instituion excess claims fee is required on filing if the petition is challenging more than 15 claims. A filing date would not be accorded unless the required fees are paid.

For example, for a petition that is challenging 25 claims, the following fees are rquired on filing:

The inter partes request fee (§ 41.15(a)(1)): $9,000

The inter partes post-instituion fee (§ 41.15(a)(2)): $14,000

Excess claims fee ($ 200 for each claim in excess of 20) for requesting 5 claims in excess of 20 (§41.14(a)(3)): $1,000

Post-institution excess claims fee ($400 for each claim in excess of 15) for requestion 10 claims in excess of 15 (§ 41.15(a)(4): $4,000

Total: $28,000

Yes, in such a situation, the petitioner may file in PRPS a request for a refund of any post-institution fee paid. For the example in FAQ E6, a total of $18,000 ($14,000 + $4,000) may be refunded if the petition is denied. The petitioner should specify in the request what amount it believes should be refunded and why.

In the situation where the Board decides to institute a review for fewer claims than requested, the petitioner may request a refund for each denied claim, post-instituion excess claims fee paid. For the example in FAQ E6, if teh Board decides to institute a review for only 16 claims out of the 25 challenged claims, a total of $3,600 ($400 x 9 denied claims, post-institution excess claims fee paid) may be refunded.

Yes, the petitioner should list other related review proceedings, as related matters, including those that are being filed concurrently or subsequently. This will promote administrative efficiency as the Board may assign the same panel to all related review proceedings.

No, only one credit card may be used. Parties may not split payment over multiple credit cards. Furthoer note that Treasury Department regulations limit a credit card payment to a $49,999.99 per day transaction.

Yes, a petitioner may file a request for a refund of the petition fees when the petition is not accorded a filing date for a failure to meet a statutory requirement.

The following are the top 10 common errors:

1. Improper usage of claim charts by including arguments, claim construction, and/or legal analysis in a claim chart (seeFAQ D12);

2. Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction section;

3. Exhibits do not match the documents listed in the Exhibit List;

4. Failure to identify related matters or provide a statement that there are no related matters;

5. Exhibits are not sequentially numbered in the 1001-1999 range;

6. Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10;

7. Margins less than 1 inch as required by § 42.06;

8. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by § 42.104(a) or § 42.204(a);

9. The petition and supporting documents are served on the patent owner at an address that is not the correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a); and

10. The petition and supporting documents are served on the patent owner later than the filing of the petition.

No. Extensive usage of claim charts in a petition is discouraged.

The rules require that a petition identify how the challenged claims are to be construed and how the claims are unpatentable under the statutory grounds raised. This information is to be provided pursuant to the page limit requirements, which require double spacing. Additionally, the rules require that the petition specify where each element of a challenged claim is to be found in theprior art. The element by element showing may be prvided in a claim chart, which is permitted to be written with single spacing. See § 42.6(a)(2)(iii). Placing one's argument and claim construction in a claim chart to circumvent the double spacing requirement is not permitted, and any such argument or claim construction amy not be considered by the Board.

The Board previously accepted a few petitions with claim charts that included claim constructions, arguments, and explanations as to how the claim is unpatentable because the procedure for filing AIA petitions was new. However, correction is now required when a petition includes improper usage of claim charts.

Claim charts should be presented in a readable format so that a reader (e.g., the patent owner or a deciding official) is able to locate the disputed claim limitations and the relied-upon portions of the prior art quickly. Presenting claim limitations and prior art teachings in a single column format and/or without appropriate spacing creates inefficiency and, at times, appears to circumvent the page limit set forth in 37 C.F.R. § 42.24. Claim limitations should be presented in a separate column (e.g., claim limitations should be presented in a separate column (e.g., claim limitations in the left column and prior art teachings in the right column), and each claim should be presented in a separate chart.

Various screens are provided in PRPS for submitting a petition, including "Party Information," "petition Documents," "Payment," Counsel Information," "Related Matters," and "Review Petition." A petition and all exhibits to the petition should be uploaded using the "Petition Documents" screen. To submit a document accompanying the petition (e.g., a motion to seal), click on "Upload Document" at the top-eft of the screen, enter the document information in the following screen, and click "Submit." The "Upload Document" function, however, should not be used for the petitoin itself and any exhibits to the petition.

The Office will provide the petitioner one month from the Notice of Incomplete Petition to correct the petition. Please see 37 C.F.R. §§ 42.106(b), 42.206(b), and 42.407(b), and FAQ D3.

No. All documents, other than drawings, must be written in portrait orientation including claim charts and arguments. The Board previously accepted a few peittions with claim charts written in landscape orientation because the procedure for filing AIA petitions is new.

Switching from portrait orientation to landscape orientation within a document (e.g., a petition) creates inefficiency for the reviewing officials at the Board. Therefore, correction is now required when a document or portions thereof (e.g., claim charts) are written in landscape orientation. This is consistent with the policy set forth in § 42.1(b) and the practice set forth in § 1.52(a)(1)(iii) for filing papers that are to become a part of the permanent record in the applicaion or patent files within the qyule最新电信一.

No. The petitioner's mandatory notices must be filed as part of the petition itself. See §§ 42.8(a)(1), 42.104, 42.204, 42.304, and 42.405. The Board previously accepted a few improper mandatory notices because the procedure for filing AIA petitions is new. However, correction is now required when a petitioner's mandatory notices are not filed as part of the petition.

No. In the situation where a petitioner files multiple petitions challenging the same patent, the petitioner should number its exhibits uniquely for both cases, such as 1001-1099 for case #1 and 1101-1199 for case #2. See § 42.63(c). Similarly, the patent owner in such situation should umber its exhibits uniquely for both cases, such as 2001-2099 for case #1 and 2101-2199 for case #2. Therefore, if the Board decides to consolidate the cases, the exhibits would continue to be uniquely numbered in the consolidated proceeding.

Once the time period for correcting regulatory defects has expired, the petition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause. If the petitioner fails to respond to sch an Order appropriately, the proceeding may be terminated. It is important to note that the petitioner will not be enntitled to a refund of any fees paid because the petition was in compliance with the statutory requirements for a filing date. For petitions filedon or after March 19, 2013, however, the petitioner may file a request for a refund of any post-insitution feed paid. See FAQ E7.

Yes, the petition and supporting evidence must be served on the patent owner/respondent at the correspondence address of record for the subject matter. The petitioner may additionally serve the petition and supporting evidence on the patent owner/respondent at any other address known to the petitioner as likely to effect service. See §§ 42.105(a), 42.205(a), and 42.406(a).

You must use the lead counsel's user ID to submit any document in the proceeding, even when you used a different user ID to file the petition. To upload the document, see FAQ G1.

In some previous versions of PRPS, PRPS assigned a sequential number (Paper 1, 2, 3, etc.) to a paper immediately when the paper was uploaded. Thus, if a user uploaded a paper but then deleted it before submitting, the assigned number was not reassigned, causing a gap in the numbering of papers in that proceeding. In the current version of PRPS, papers are assigned a number only when the submission process is completed, so there are no gaps in paper numbers.

Anyone can register to use PRPS and obtain a user ID, such as a pro se patent owner or an attorney who is not registered to practice before the Office under 37 C.F.R. § 11.6.

Once the Office reviews the petition and determines whether the petition is complete and the appropriate fees have been paid, the Office will send a notice to the petitioner and patent owner/respondent. The submission date of the compliant petition will be accorded as the filing date.

If the petition complies ewith all of the statutory requirements (see 35 U.S.C. 135, 312, and 322), the original submission date of the petition will be accorded as the filing date. Conversely, no filing date will be accorded if a statutory requirement is not satisfied. For example, for fee deficiencies, the Office will accord the later submission date when all appropriate fees have been paid because the fees are required by statute. See, e.g., 35 U.S.C. 312(a)(1).

In the situation where a petition complies with all the statutory requirements but contains only regulatory defects, the Office will accord the filing date of the original submission and notify the petitioner of the defects. The regulatory defects must then be corrected within the time period set forth in the notice.

You will lose any data entered on the last screen in which you were active before becoming idle. For example, if you were on the counsel page and were entering data for the backup counsel but did not finish and your system was idle for 30 minutes or more, the data entered on that page would be lost.

You will have to close your browser and reopen your browser to access the PRPS website. You can open the case again from 'My Docket' and locate the hyperlink under 'My Pending Tasks' to continue working on the case. Once you have uploaded all your documents, then you can submit them.

Yes, PRPS will collect and report statistics about the new proceedings. Currently, users may search the proceedings based on a particular trial type, party name, petition filing date, institution date, patent number, and application number (for derivation proceedings).

A trial proceeding will be listed in the search results only when the (multi-step) process of submitting a petition for instituting a trial proceeding via PRPS has been succcessfully completed. If the process of filing a petition is not yet completed or was never completed, a trial number will be provided but it will not be listed in the search results.

PRPS is intended for use by the general public. Due to limitations of equipment and bandwidth, PRPS is not intended to be a source for bulk downloads of qyule最新电信一 data. Individuals, companies, IP addresses, or blocks of IP addresses who, in effect, deny service to the general public by generating unusually high numbers of daily PRPS accesses (e.g., searches, pages, document retrievals), whether generated manually or in an automated fashion, may be denied access to PRPS without notice.

Certain screens in PRPS allow for the entering of address information (e.g., for a petitioner or patent owner/respondent's real party in interest). In the case of a foreign address, users should select the appropriate country in the "Country" field, select the blank "-" entry in the "State" field, and the input the next three lines of the foreign address in the "Address Line 1," "City," and "Postal Code" fields.

Nothing as long as you are active-(key strokes, clicks, etc.)--, you can continue to work as you normally do.

After you upload a document in the proper format (i.e., PDF or MPEG for exhibits and PDF for all other documents) and click "Submit," you will receive an acknowledgement on the screen in PRPS and a filing receipt via email if the document is filed properly. If you did not receive an acknowledgement on the screen or a filing receipt via email if the document is filed properly. If you did not receive an acknowledgement on the screen or a filing receipt via email, the cocument most likely has not been uploaded properly and you shoudl contact the Board at (571)272-7822. You may also check whether the document is listed in the file contents of the proceeding.

Yes, as long as the document has not yet been submitted. When uploading a document, users should ensure that the correct file has been selected before clicking the "Upload File" button. If the wrong document is uploaded but the "Submit" button has not yet been clicked, you may delete the document by clicking the trash can icon shown on the screen. Once all documents are uploaded, the user must click the "Submit" button to complete the submission. Documents uploaded, but not yet submitted, have not been filed with the Board.

If the wrong document was uploaded and the "Submit" button was clicked, you should file the correct document and a motion to expunge the wrong document as soon as possible. Any motion to expunge filed on the same day as the wrong document will generally be granted.

Yes, more than one person may review documents or upload documents in a proceeding at the same time, even if they are sharing a user ID.

If PRPS is down during normal business hours, a party may contact the Board and request a one-day extension of time for due dates that are set by rule or orders of the Board. 37 C.F.R. § 42.5. In the unlikely event that an administrative patent judge is not available to rule on the extension, the Board may grant an extension the day after the paper is due. However, no extensions of time will be granted for any statutory time period.

A single uploaded file may not exceed 25 megabytes in size. For technical reasons, PRPS is unable to accept files over 25 megabytes at this time. qyule最新电信一 expects to be able to increase the limit in future releases.

If you need to file a document that exceeds 25 megabytes, please call the Board at (571) 272-7822.

Users are encouraged to reduce the file size by:

  1. splitting a large file into multiple smaller files; and/or
  2. converting MS Word® documents into PDF files, rather than printing documents and scanning them in as PDF files.

No.

There are no special naming conventions for documents, but the number of characters is limited. The user will be prompted to provide a name that will appear in the docket listing. This name should be simple and descriptive, such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith." Document names must be less than 255 characters.

A petition is a signed, written request presented to the Office.

No. Petitions are decided in accordance with the delegation of authority as indicated in MPEP§ 1002. Further information on the various petitions handled by the Office of Petitions can be found here under RESOURCE INFORMATION AND REFERENCE MATERIALS.

  • of the petitions handled by the Office of Petitions can also be filed as .

Go to the Patent Trial and Appeal Board (PTAB) Web page at: http://juliemarsh.net/ip/boards/bpai/index.jsp, and then click on "Direct Link" under "Patent Review Processing System (PRPS)".

Once you are registered, close out of the browser completely, and then bring the browser back up and go tohttps://ptabtrials.juliemarsh.net. You will receive an email containing the verification code.

On the PRPS welcoming screen, click on Login and enter your User ID and password. When the screen asks for the verification code, copy and paste the verification code from the email.

If you have any difficulties with PRPS, please call the Board at (571) 272-7822.

However, if PRPS is unavailable during normal business hours, petitions (and other documents) may be submitted to the Board via email: [email protected].

Petitions submitted via email must include:

* name of point of contact;

* email address of point of contact;

* patent number to which the petition corresponds (or application number in the case of a derivation proceeding);

* application number of the patent;

* petitioner's application number (in the case of a derivation proceeding);

* number of claims challenged;

* type of trial proceeding;

* power of attorney; and

* fee, e.g., a deposit account authorization.

In addition, a petition or document submitted via email or other means must: (1) be accompanied by a motion requesting acceptance of the submission, and (2) identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board. 37 C.F.R. § 42.6(b). It is important to note that a petition will not be accorded a filing date unless it is accompanied by a payment of the appropriate fees (e.g., a deposit account authorization).

Paper filing via EXPRESS MAIL® (or by means at least as fast and reliable as EXPRESS MAIL®) is authorized only if both PRPS and the Board's email address ([email protected]) are unavailable. The mailing address is:

Mail Stop PATENT BOARD

Patent Trial and Appeal Board

qyule最新电信一

PO Box 1450

Alexandria, Virginia 22313-1450

For hand delivery or delivery via FEDEX, UPS, etc.:

Mail Stop PATENT BOARD

Patent Trial and Appeal Board

qyule最新电信一

Madison Building (East)

600 Dulany Street

Alexandria, Virginia 22313

Yes. Applicants should advise the Board when an RCE is filed in an application containing an appeal awaiting decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision. If the appeal has not been decided, the filing of the RCE will result in dismissal of the appeal. See MPEP §§ 1215.01, 1215.02, 1215.03. See also MPEP § 706.07(h) for procedures for filing an RCE after appeal but before Board decision.

Yes. Appellant may file an RCE within the 2 month period after the decision is entered. See MPEP §§ 1215.01, 1215.02, 1215.03. See also MPEP § 706.07(h) and 37 CFR § 1.114(a)(3) for procedures for filing an RCE after a Board decision and before an appeal to a court.

No.

Yes. If the Office reopens prosecution and applicant wishes to reinstate the appeal, applicant may file both a new notice of appeal and a new request for Pre-Appeal Brief Conference on the same date. It makes no difference if applicant previously filed a request for Pre-Appeal Brief Conference and received a panel decision; a new request for Pre-Appeal Brief Conference may be filed with a new notice of appeal.

The RCE must be filed during the pendency of the application. The RCE would be timely if submitted within the greater of two months from the date of the notice of appeal or one month from the mail date of the panel's decision on the Pre-Appeal Brief Conference Request. The time period for filing the RCE is extendable under 37 CFR 1.136.

You will need to file a petition under 37 CFR § 41.3 and the requisite fee under 37 CFR § 41.20(a) requesting that the hearing request be accepted. Such petition is due within 14 days from the Order Denying Oral Hearing or other time period set by the Board in writing. See 37 CFR § 41.3(e). The Chief Administrative Patent Judge or his/her designee will decide the petition.

Applicant will be promptly notified if the request is dismissed as non-compliant. The time period for filing an appeal brief two months from the filing date of the notice of appeal continues to run. See 37 CFR 41.37(a). Appellants may petition for extensions of time under 37 CFR 1.136 pursuant to 37 CFR 41.37(e).

The time period for filing an appeal brief will be reset to one month from the mailing of the decision on the request, or the balance of the two-month time period running from the notice of appeal, whichever is greater. The time period for filing an appeal brief is extendible under 37 CFR 1.136. The Office will sua sponte waive 37 CFR 41.37(a)(1) to the extent that the rule is inconsistent with the Pre-Appeal Brief Conference Pilot Program.

The time period for filing an appeal brief will be reset to one month from the mailing of the decision or the balance of the two-month time period running from the notice of appeal, whichever is greater. The time period for filing an appeal brief is extendible under 37 CFR 1.136. The Office will waive 37 CFR 41.37(a)(1) to the extent that the rule is inconsistent with the Pre-Appeal Brief Conference Pilot Program.

No. The notice of appeal fee is not refundable even if the panel decision is favorable to the applicant. However, any previously paid notice of appeal fee will be applied to a new appeal on the same application as long as a final Board decision has not been made on the prior appeal. See MPEP 1204.01.

No. The Office will not permit the applicant to attend the panel review of the request and no interviews will be granted prior to issuance of the panel's decision.

Generally, the Office should mail a decision within 45 days of a properly-filed request.

No. In response to the Conference Request, the Office will mail a form titled, "Notice of Panel Decision from Pre-Appeal Brief Review" indicating one of the following:

  • Finding 1: The application remains under appeal because there is at least one actual issue for appeal.
  • Finding 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
  • Finding 3: The application is allowed on the existing claims and prosecution remains closed.
  • Finding 4: The request fails to comply with the submission requirements and is dismissed.

No. A panel decision is not a final agency action for purposes of court review. An applicant who is dissatisfied with the panel's decision must pursue the appeal before the Board of Patent Appeals and Interferences.

Yes. Applicant may request a Pre-Appeal Brief Conference if the request is filed on the same date as the compliant notice of appeal.

No. Applicant must resubmit the request for Pre-Appeal Brief Conference on the same date as the compliant notice of appeal. The Office will not waive the requirement that they be submitted on the same date and will not consider a request for Pre-Appeal Brief Conference that is filed prior to a proper notice of appeal.

The Office has established an Appeal Center to review the formality requirements of the Pre-Appeal Brief Conference Request. If the request does not meet the formality requirements, the Office will mail a notice titled "Notice of Non-Compliant Pre-Appeal Brief Request for Review" (Form PTOL-462). This notice will not be considered a panel decision.

The Technology Center Art Unit supervisor will designate a panel to consider the request. The panel will consist of at least a supervisor and the examiner of record.

Yes, if applicant submits an amendment under 37 CFR 1.116 prior to the date of the filing of the notice of appeal and Pre-Appeal Brief Conference Request, the Office will consider the Pre-Appeal Brief Conference Request, assuming that all of the other content requirements of the Pilot Program have been met.

No. The Pre-Appeal Brief Conference Pilot Program provides that if applicant files an amendment after appeal under 37 CFR 41.33(a) prior to the decision by the panel, the Office will terminate the panel's review of the request.

No. The Office will terminate the panel's review of the request if the RCE, affidavit or other evidence under 37 CFR 41.33(d)(1), or express abandonment is filed prior to a decision by the panel.

No. Once applicant files a proper notice of appeal, applicant must perfect the appeal by filing the appeal brief within two months of the date of filing the notice of appeal under 37 CFR 41.31. Appellant cannot request withdrawal of a properly-filed notice of appeal for the purpose of requesting a Pre-Appeal Brief Conference.

Yes. Presently, the applicant may single space the Pre-Appeal Brief Conference Request. However, applicant should be mindful of the requirements for papers that are to become part of the permanent绝伦推理电视剧推荐records. Accordingly, the request must comply with the requirements of 37 CFR 1.52(a).

No. The request should be based on clear legal and factual deficiencies in the rejections. The program is not intended to review an interpretation of the claims or prior art teachings which are better suited for the traditional appeal process.

No. An applicant who wishes to argue that the final rejection was premature may petition pursuant to 37 CFR 1.181 since the appropriateness of a final rejection is a petitionable matter, not an appealable matter. See MPEP 706.07(c). The Pre-Appeal Brief Conference Pilot Program does not affect petitions to invoke the supervisory authority of the Director under 37 CFR 1.181 which are decided outside of the Pre-Appeal Brief Conference Program.

If applicant files a notice of appeal, a Pre-Appeal Brief Conference Request, and an RCE all on the same date, the Office will not consider the notice of appeal or the Pre-Appeal Brief Conference Request. The filing of an RCE includes in this scenario the filing of a reply, thus the application would no longer be under rejection. Applicant cannot file an appeal in an application with an RCE until the application is under rejection, even if such application has been twice rejected prior to the RCE submission. See MPEP 1204. Accordingly, the request for a Pre-Appeal Brief Conference will be dismissed.

No. The request form (PTO/SB/33) or an equivalent that doesn't also include argument does not count towards the five-page limit. Applicant may submit the one-page PTO/SB/33 form and up to five pages of arguments.

Yes. The sixth page that consists solely of the signature of the requester will not be counted toward the five-page limit and the request will be deemed compliant for purposes of the five-page limit.

No. The Office deems conclusions as argumentative. Thus, a request that includes five pages of arguments and a sixth page that includes conclusions would be deemed non-compliant.

No. The Office deems the definitional pages as arguments that count toward the five-page limit. Thus, such a request would be deemed non-compliant because it includes a total of eight pages.

Yes. Any amendment pursuant to 37 CFR 1.116 that is filed on the same day as the Pre-Appeal Brief Conference Request, regardless of whether the amendment is filed together with the notice of appeal and request or in a separate submission, will be considered to accompany the request. Therefore, such a request will not meet the content requirements of the Pilot program.

No, this procedure has not been adopted. The Office will not decide a request for a Pre-Appeal Brief Conference that is filed after the date of a proper notice of appeal. The request and notice of appeal must be filed on the same date.

The request should specify:

  • clear errors in the examiner's rejections; or
  • the examiner's omissions of one or more essential elements needed for a prima facie rejection.

For example, an applicant faced with an obviousness rejection should concisely point out (i.e., in no more than five pages) that a limitation is not met by a reference. Applicant can refer to arguments already of record rather than reasserting such arguments in the request. For example, applicant may point to a prior submission by paper number and/or date of submission and the relevant portions thereof (e.g., see response filed xx/xx/xx at pages 4 to 6).

For questions concerning the Pre-Appeal Brief Conference Pilot Program, please contact Kery Fries, Senior Legal Advisor by telephone at 571-272-7757, or the Office of Patent Legal Administration by telephone at 571-272-7701; or by email to [email protected] .

Pursuant to 37 CFR 41.31, an applicant having claims twice rejected may appeal from the decision of the examiner to the Board of Patent Appeals and Interferences (BPAI). Accordingly, if the claims have not been twice rejected, the notice of appeal would be premature and the Pre-Appeal Brief Conference Request would be dismissed.

A claim may qualify as having been twice rejected if the claim was rejected in a parent application and then a claim was subsequently rejected in a continuing application, even if the claim was only rejected once in the continuing application. See Ex Parte Lemoine, 46 USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994).

No. The request and notice of appeal must be filed on the same date.

No. The Pilot program announcement provides that no after-final or proposed amendments may accompany the request. See Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005). In order to keep the issue(s) narrowly focused, the Office will dismiss any Pre-Appeal Brief Conference Request that is accompanied by an amendment under 37 CFR 1.116.

Yes, a Pre-Appeal Brief Conference Request may be filed in a reissue application.

No. The program is inapplicable to both inter partes and ex parte reexamination proceedings.

In July 2005, the Office established the Pre-Appeal Brief Conference Pilot Program to run for a period of six months. On January 10, 2006, the Office, citing promising results, extended the program indefinitely. See Extension of the Pilot Pre-Appeal Brief Conference Program, 1303 Off. Gaz. Pat. Office 21 (Feb. 7, 2006). The Office continues to review the results of the program to determine the overall effectiveness of the program as well as the formal requirements of the program.

The purpose of the program is to spare applicant the added time and expense of preparing an appeal brief if a review panel determines an application is not in condition for appeal. In proper situations, it can save both the resources of the applicant and the Office.

(1) File the request and accompanying arguments in a separate paper titled "Pre-Appeal Brief Request for Review" (Form PTO/SB/33 or equivalent).

(2) Provide in five pages or less, concise, succinct and focused arguments for which the review is being requested.

(3) File the request with the notice of appeal.

(4) File the request without an amendment on same date

(5) Address the notice of appeal and the request to one of the following:

  • Mail Stop AF
  • Commissioner for Patents
  • P.O. Box 1450
  • Alexandria, VA 22313-1450

  • Fax the notice of appeal and the request to the Central FAX Number (571 273-8300)

  • Hand carry the notice of appeal and the request to the
  • qyule最新电信一 Customer Service Window, ATTN: Mail Stop AF
  • Randolph Building
  • 401 Dulany Street
  • Alexandria, VA 22314

  • Submit the notice of appeal and the request via EFS-Web.

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Application # - ‘99/999,999' or '99999999'

Patent # - ‘9,999,999', '99,999,999', '9999999', '99999999',

Design 'D999,999', 'D999999', Plant 'PP99,999', 'PP99999', Reissue 'RE99,999', 'RE99999',

Def. Pub. 'T999,999’, 'T999999', SIR 'H999,999' or 'H999999'

PCT # – PCT/CCYYYY/NNNNNN or PCT/CCYY/NNNNN, where C = Country Code, Y = year filed, and N = 5 or 6 digit number .

Publication # - 'US 9999-9999999 A9', '9999-9999999 A9', '9999-9999999', 'US 99999999999 A9', '99999999999 A9', '99999999999'

International Design Registration # - DM/999999

No, the first-inventor-to-file provisions in the AIA apply only to patent applications that contain or contained at any time: (1) a claim to a claimed invention that has an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2012; or (2) a designation as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time a claim to a claimed invention with an effective filng date on or after March 16, 2013.

Neither filing a request for continued examination, nor entering the national stage under 35 U.S.C. 371, consitutes filing a new application. Accordingly, even if a request for continued examination under 37 CFR 1.114 is filed after March 16, 2013, in an application that was filed before March 16, 2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage under 35 U.S.C. 371 before or after March 16, 2013.

Additionally, if some of the claims of an application have an effective filng date before March 16, 2013, and other claims have an effective filing date on or after March 16, 2013, then the application will be subject to the first-inventor-to-file provisions. The first-inventor-to-file provisions apply to an applicatoin that contains, or ever contained, a claim to an invention having an effective filing date on or after March 16, 2013.

If the amendment is a preliminary amendment, the time period is 1 month or thirty days whichever is longer, and this time period is not extendable. If applicant fails to take corrective action, the examiner will examine the application without considering the changes in the non-compliant preliminary amendment.

No, a petition and the surcharge would not be required because the prior application was correctly identified without the filing date, and since a benefit claim pursuant to 37 CFR 1.78(a)(2) does not require identification of the filing date of an application filed under 35 U.S.C. 111(a).

The prioritized examination program grants special status until one of the following occurs:

i. Applicant files a petition for extension of time to extend the time period for filing a reply.
ii. Applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.
iii. Applicant files a request for continued examination (RCE).
iv. Applicant files a notice of appeal.
v. Applicant files a request for suspension of action.
vi. A notice of allowance is mailed.
vii. A final Office action is mailed.
viii. The application is abandoned.
ix. Examination is completed as defined in 37 CFR 41.102.

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The prefixes of trial proceeding numbers track the fiscal year. Fiscal year 2013 started on October 1, 2012. Thus, any petitions filed between October 1, 2012 and September 30, 2013 will receive a trial proceeding number with a prefix of "2013" (e.g., IPR2013 or CBM2013).

No, petitioners must pay the full amount in PRPS using one form of payment. Petitioners with a special need to use multiple forms of payment (e.g., deposit account and credit card) to pay the fees for a single IPR, PGR, or CBM petition should contact the Board at (571) 272-7822. Petitioners will be asked to provide written authorization to change the requested forms of payment. Transfer will the occur as soon as practicable. The date when transfer is completed will be used for purposes of according a filing date to the petition. See FAQ D1.

PRPS provides screens for the parties to enter certain information (e.g., lead and back-up counsel and real party in interest_. However, the Office does not have forms beyond those PRPS fillable screens. While forms may become available with future releases, most filings will be part of motion practice rather than pre-defined forms.

Once a petition is submitted via PRPS, a Board paralegal will review the petition for statutory and regulatory compliance.

First, there are certain statutory requirements in 35 U.S.C. 135(a), 312(a), and 322(a) that must be met for a petition to be accorded a filing date. The following is a list of the "top 5" things the paralegal will be looking for in IPR, PGR, and CBM petitions:

  • Appropriate fee successfully paid,
  • Identification of the patent and the specific claim(s) being challenged,
  • Identification of the real party in interest,
  • Copies of the patents and printed publications relied upon in the petition, and
  • Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner.

The following are the "top 4" things the paralegal will be looking for in DER petitions:

  • Appropriate fee successfully paid,
  • Identification of the petitioner's pending application,
  • Identification of the respondent's earlier filed patent or application, and
  • Evidence, (e.g., certificate of service) that a copy of the petition was provided to the respondent.

If any statutory requirement is not met, the petition is incomplete .

  • The paralegal may call the individual who filed the petition and explain the deficiency.
  • The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will receive notification by email.
  • The deficiency may be corrected within one month and the petition will be accorded the filing date of the NEW submission.
  • If the deficiency is not corrected within one month, the petition will be dismissed. One exception is when the petitioner challenges more than 20 claims (15 beginning March 19, 2013) but does not pay the excess claims fees - the petitioner will receive notification and can file a request to have the Board review just the first 20 challenged claims (15 beginning March 19, 2013).

Second, there are certain regulatory requirements in part 42 of 37 C.F.R. that must be met (e.g., page limits, font size, signature, identification of lead and back-up counsel).

If any regulatory requirement is not met, the petition is defective.

  • The paralegal may call the individual who filed the petition and explain the defect.
  • The paralegal will enter a Notice of Filing Date Accorded to Petition and the individual who filed the petition will receive notification by email.
  • While the petition will be accorded the filing date of the ORIGINAL submission, the defect must be corrected within one week.
  • If the defect is not corrected within one week, the petition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause, and terminated if the petitioner fails to respond to such an Order.

If there are no statutory or regulatory errors with the petition, the paralegal will enter a Notice of Filing Date Accorded to Petition, the petitioner will receive notification by email, and the patent owner/respondent will receive a copy via regular mail.

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Applicant may file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the qyule最新电信一 in not granting the request before filing such a petition under 37 CFR 1.181.

Alternately, applicant may file a new request for prioritized examination for that same request for continued examination. The new request must include the proper fees and be timely; i.e., be filed prior to the mailing of a first Office action after the filing of the request for continued examination.

Applicant may file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the qyule最新电信一 in not granting the request before filing such a petition under 37 CFR 1.181.

Alternately, applicant may file a new request for prioritized examination for that same request for continued examination. The new request must include the proper fees and be timely; i.e., be filed prior to the mailing of a first Office action after the filing of the request for continued examination.

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Yes. A Pre-Appeal Brief Conference Request is not included on the list of submission types that cannot be filed using EFS-Web. See Legal Framework for EFS-Web, Section B1 and B2 of Federal Register Notice, Legal Framework for Electronic Filing System-Web (EFS-Web) (October 27, 2009).

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Yes, you may personally deliver your patent application to the U.S. Patent and Trademark Office (qyule最新电信一). The qyule最新电信一, is located in Alexandria, Virginia >> Directions. The following mailing addresses may be of assistance to you.

Mailing address of the U.S. Patent and Trademark Office is:

Commissioner for Patents
P.O. Box 1450,
Alexandria, VA 22313-1450

For private courier patent deliveries, the street address of the USPT0's mailroom is:

qyule最新电信一
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314

No, you can not fax in your patent application. Fax machines do not currently produce a document of sufficient quality to allow the text to be scanned and processed for publication purposes. Applications may, however, be filed through the Electronic Filing System (EFS). For additional information on EFS, contact the Electronic Business Center at (866) 217-9197 (toll free) or (703) 305-3028. For additional information regarding filing patent applications, you may contact the qyule最新电信一 Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time

Protests by a member of the public against pending applications will be referred to the examiner having charge of the subject matter involved. A protest specifically identifying the application to which the protest is directed will be entered in the application file if: (1) The protest is submitted prior to the publication of the application or the mailing of a notice of allowance under rule 1.311, whichever occurs first; and (2) The protest is either served upon the applicant in accordance with rule 1.248, or filed with the Office in duplicate in the event service is not possible. For more detailed information on protesting a patent, you may visit our Web site athttp://juliemarsh.net/web/offices/pac/mpep/mpep.htm for the Manual of Patent Examining Procedure (MPEP) Chapter 1900.

Currently, the average patent application pendency is 24.6 months. Applications received in the U.S. Patent and Trademark Office are numbered in sequential order and the applicant will be informed within eight weeks of the application number and official filing date if filed in paper. If filed electronically, the application number is available within minutes.

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The effective date for the covered business method review provision in the AIA is September 16, 2012.

The AIA provides that the covered business review provision sunsets after 8 years from the effective date of the provision.  Accordingly, the Office will not accept new petitions for covered business method review filed on or after September 16, 2020.

A covered business method review is available for all patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-inventor provisions in current Title 35, provided that the patent is drawn to a covered business method.  The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.  The AIA does not specify what a patent for a technological invention covers, and therefore, the Office has promulgated a rule for technological invention.

In administering the program, the Office will consider the legislative intent and history behind the public law definition and the transitional program itself.  For example, the legislative history explains that the definition of covered business method patent was drafted to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”  157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Senator Schumer).  This remark tends to support the notion that “financial product or service” should be interpreted broadly.

In determining whether a patent is for a technological invention, the following will be considered on a case-by-case basis:  whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

Generally, the AIA provides that covered business method reviews will employ the standards and procedures of a post grant review, subject to certain exceptions such as the grounds for challenge and the scope of estoppel.

Only a person who is sued or charged with infringement of a covered business method patent may petition for a covered business method review of the patent.

A covered business method review may be requested except during the period in which a petition for post-grant review could be filed, e.g., 9 months after the issuance of a patent that is subject to the first inventor-to-file provisions.  The transitional review program is available for non-first-to-file patents, even within the first nine months of the grant of such patents.

Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.

The definition for a covered business method patent provided in the AIA provides that a covered business method patent is “a patent that claims a method or corresponding apparatus for performing data processing . . . , except that the term does not include patents for technological inventions.”  (Emphasis added.)  The determination of whether a patent is a covered business method patent subject for review therefore will be based on what the patent claims.

Yes, a petitioner in a covered business method review may not request or maintain a subsequent proceeding before the Office with respect to any claim on any ground raised or reasonably could have been raised in the covered business method review.  By contrast, a petitioner in a covered business method review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised.

Like in a post grant review, where a covered business review is instituted and not dismissed, the Board shall issue a final written decision.  The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the covered business review.

A covered business method review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

A petitioner for covered business method review may request to cancel as unpatentable one or more claims of a covered business method patent granted under the first-to-file provisions of the AIA on any ground, but limited prior art shall apply for those challenged covered business method patents granted under the first-to-invent provisions of Title 35.

Where another matter involving the same patent is before the Office during the pendency of the covered business method review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.  Joinder may be requested by a patent owner or petitioner.

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was not permitted to do during the proceeding.

Yes, the AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of the review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

Like in a post grant review, parties to a covered method patent review are permitted to settle.  A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.

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The petitioner bears the burden to demonstrate that the challenged patent is a covered business method patent and that at least one claim of the challenged patent is not directed to a technological invention to show that the petitioner has standing to proceed.  The showing for both covered business method patent and technological invention is based on what is claimed.

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No.  There is no limit placed upon the number of submissions from a person or entity.  However, each separate topic should be presented in a separate submission to ensure consideration.

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Submissions should not contain information associated with any particular patent application or patent, any particular examiner, or any particular art unit.  Additionally, topics should focus on patent quality issues and not relate to other issues such as management concerns or statutory changes.  Furthermore, the submission should concisely explain the nature and purpose of the proposed study to aid the qyule最新电信一 in selecting the best topic(s) for this pilot program and should not include lengthy supporting documentation or arguments.

qyule最新电信一

You must file a request for a Certificate of Correction. If the correct data is indicated on the Issue Fee Transmittal (PTOL-85b), a Certificate of Correction will be issued. This would be considered an Office error and does not require a fee or petition.

If this is an applicant's error, that is the correct assignee's name and/or address is not indicated on the PTOL-85B, a Petition under 1.183 is required.

How to file a Petition under 1.183:

  • Direct Petitions to correct assignees' names and/or address to the Office of Petitions, Box DAC. Include your request for Certificate of Correction to correct applicant's error
  • Include petition fee (and Certificate of Correction fee, if not previously submitted)
  • Clearly indicate correct name and address of the assignee(s)
  • Provide the reel and frame number where the assignment(s) is recorded or proof of date the assignment was submitted for recordation.

Send your change of correspondence address and/or power of attorney to:

Mail Stop Post Issue
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

In addition, a copy of the request (marked copy) should be sent to the Certificates of Correction Branch at:

Commissioner for Patents
Office of Data Management
Attn: Certificates of Correction Branch
P.O. Box 1450
Alexandria, VA 22313-1450

This will ensure the proper mailing of any correspondence being directed to you regarding your Certificate of Correction.

Call 571.272.5400 for corrections to trademarks. The Certificates of Correction Branch is responsible for making corrections to only printed patents.

The Certificates of Correction form (PTO/SB/44, same as PTO-1050) may be obtained by contacting the General Services Division at 1.800.786.9199 (1.800.PTO.9199) or 571.272.1000.
Also, the forms are available on the qyule最新电信一 Internet site at:
http://juliemarsh.net/web/forms/index.html .

A correction made by way of a Certificate of Correction appears as an attachment to the patent. At this time, no changes are made to the incorrect patent as originally displayed on the qyule最新电信一 Web page.

You must submit your request in writing justifying why the expedited service is needed. Please include your justification with your request for a Certification of Correction, and mail to:

Commissioner for Patents
Office of Data Management
Attention: Certificates of Correction Branch
P.O. Box 1450
Alexandria, VA 22313-1450

The issue notification is not used for printing. Therefore, errors in your issue notification do not necessarily mean that the data will be incorrectly printed in your printed patent. Such data, as mentioned above, should have been filed during the pendency of your patent and correctly noted on your Declaration, the first page of the specification, and bibliographical page/sheet, which is used for verification and printing of the patent. Since your printed patent will be mailed shortly after the issue notification, you should check your printed patent before inquiring as to issuance of a Certificate of Correction.

You should file a request for a Certificate of Correction that contains the following:

  1. A transmittal letter or cover letter that includes bibliographic data identifying the:
    • patent number
    • application number
    • inventor(s)
    • issue date
    • title of invention

    NOTE: The transmittal letter should be signed by the attorney of record or owner of record and should state any facts supporting the requested corrections.

  2. A copy of any document supporting the requested correction(s), your search revealed, that are not in the Office record or file (e.g., post card receipts, amendment(s), 1449)
  3. Form PTO/SB/44 (same as form PTO-1050)
  4. Identification of the location of error(s). Identify them by column and line number, using the nearest marginal line number in the printed patent.

Leave 2 inches at the bottom of the last page or first page if only one page.

No fee is required to correct errors made by the Office; however, if it is an applicant's error the required fee for consideration is $100.

All requests are to be mailed to:

Commissioner for Patents
Office of Data Management Attention: Certificates of Correction Branch
P.O. Box 1450
Alexandria, VA 22313-1450

For more information, contact the Certificates of Correction Branch by e-mail: [email protected] or by telephone: 703.756.1814.

The first inquiry should be directed to the Certificates of Correction Branch via e-mail, mail or telephone.

E mail: [email protected]

Mailing address:

Commissioner for Patents
Office of Data Management
Attention: Certificates of Correction Branch
P.O. Box 1450
Alexandria, VA 22313-1450

Telephone: 703.756.1814

Second inquires should also be directed to the Certificates of Correction Branch using the above-referenced e-mail, mailing address and telephone number. However, the second inquiry by mail or telephone should be directed to the Team Leader and/or Supervisor of the employee processing your request.

Submit signed and dated transmittal letter (cover letter), identify the patent you are referring to, state all the discrepancies you have concerning the response you received, and fax it to Supervisor of Certificates of Correction Branch at 571.270.9882.

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No. The eOG:P contains a section called "Patent and Trademark Office Notices." In that section, each week, the following information is published:

  • Expired Patents: Patents that expire due to failure to pay required maintenance fees. These patent numbers are published approximately 3 months after expiration.
  • Patents Reinstated: Patents reinstated due to the acceptance of a late maintenance fee.
  • Reissue Applications: Patents filed as reissues.
  • Reexams: Patents requested to be reexamined .
  • Certificates of Correction: Patents granted certificates to correct previously published material.
  • Summaries of final decisions issued by the Trademark Trial and Appeal Board.

    In addition to the information published in the section entitled Patent & Trademark Office Notices, the following is also published in the eOG:P:

    • Errata: Correction of erroneous previously published material.
    • Service by Publication: Notification to cancel a trademark registration within 30 days, pending appearance of a registrant, assignee, or legal representative.
    • Registration to Practice: Names of individuals who have received provisional recognition to prepare and prosecute patent applications.
    • Notices from the Solicitor's Office: Notices to the public regarding changes and updates in Patent rules and regulations and/or other patent-related items.
    • Reclassification Reports: Lists newly established, deleted, or reclassified classes & subclasses, revised every 3 months.
    • Other Miscellaneous information of interest to the public.

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The e-Office Action program is a new qyule最新电信一 initiative available through Patent Center. The e-Office Action program is designed to notify applicants, via e-mail, that new Office communication is available for viewing and downloading in Patent Center. Applicants who opt-in to the program will receive a daily e-mail notification that will replace the daily POSTAL MAILED PAPER DELIVERY of Office communication.

Please Note: The e-Office Action program is based on applications associated to a Customer Number. Applicants with multiple Customer Numbers must opt-in each Customer Number to receive separate e-mail notifications.

qyule最新电信一 currently mails Office actions and all other communications to applicants. Applicants electing to participate in the e-Office Action program will receive daily e-mail notifications at their designated e-mail addresses from the qyule最新电信一 that Office communication is available for secure viewing and downloading in Patent Center. Opting into the program means that the qyule最新电信一 will discontinue mailing participating applicants paper copies of Office communication. Applicants participating in the e-Office Action program will rely solely on e-mail notifications and the Office communication that is electronically available in Patent Center rather than paper copies of communication send through the mail.

Effective on June 29, 2009, any registered attorney or agent of record, Practitioner Support, or pro se inventor who is a named inventor, in a patent application associated with a Customer Number through which Patent Center is accessed, may participate in the e-Office Action program.

A few steps make it simple and easy to begin participating in the qyule最新电信一’s e-Office Action program.

  1. Log-in to Patent Center and select Manage/Manage customer number from the menu list.
  2. Select the existing customer number you wish to change.
  3. Next, select the Edit button near the bottom of the web page to enter the “Edit customer” page.
  4. Scroll down the page until the “Outgoing correspondence” section is displayed.
  5. Check the box next to “Receive correspondence notification via Email”, then enter a maximum of three e-mail addresses.
  6. Select the Continue button to preview your changes, then submit your change request to the qyule最新电信一.

No. The actual Office communication documents can be accessed via Patent Center.

An e-mail notification provides comprehensive information regarding the new Office communication. The information in the e-mail notification includes application number(s), Image File Wrapper (IFW) Document Code, mail room date, the attorney docket number, as well as your correspondence address and associated Customer Number. Basically, you will know exactly what you are being notified for prior to accessing the actual communication in Patent Center. (Please refer to the e-Office Action Computer Based Training module for additional details and to view a sample e-mail notification).

There are two methods to access new Office communication in IFW via Patent Center. The first method is to search by individual application number then select the Documents & Transactions tab to access the file wrapper. The second method is searching by Customer Number via the Workbench dropdown and selecting View correspondence.

As a courtesy, the qyule最新电信一 will mail a reminder postcard to the applicant if new communication has not been accessed in Patent Center within seven calendar days after the sending date of e-mail notification. Please note that the postcard is sent only for communications that require an applicant’s response such as a Final Rejection, Non-Final Rejection or Notice of Allowance and Allowability.

Yes. Specific e-Office Action related events with corresponding date are available in the Documents & Transactions tab in Patent Center. The Transaction Description events are self explanatory and are labeled as “Email Notification,” “Electronic Review,” and if applicable “Mail Post Card.” In addition, an OA.EMAIL document is placed in the file wrapper of the application notified that day. The OA.EMAIL document is a truncated version of the daily e-mail listing details of only that specific application number’s new communication.

To access Patent Center you must:

  • be a registered patent attorney/agent, an Independent Inventor, or a person granted limited recognition;
  • Practitioner Support
  • have a customer number; and
  • have a Registered qyule最新电信一.gov account.

Instructions on how to apply for a Customer Number and Registered qyule最新电信一.gov account can be found on the Getting Started - New Users  page.

Each email application uses different terminology for the same function. Organizations should reference their I.T. Department for details.

  • The qyule最新电信一.GOV domain must be listed in the ‘allow’ or ‘white’ list.


    Additional spam filter configurations are:

  • The subject name for e-Office Action notifications: qyule最新电信一: Patent Electronic System - Correspondence Notification for Customer Number XXXXX, where XXXXX refers to your Customer Number.
  • The subject name for eGrant notifications: qyule最新电信一: Patent Electronic System - eGrant Notification for Customer Number XXXXX - where XXXXX refers to your Customer Number.
  • The subject name for Postcard notification: qyule最新电信一: Patent Electronic System - e-Postcard Notification for Customer Number XXXXX - where XXXXX refers to your Customer Number.
  • The ‘Sender address is [email protected]. Please do not reply to this email address.

The program includes provisional applications and nonprovisional applications filed under 35 U.S.C. 111, including utility, plant, design, and reissue applications and national stage applications under 35 U.S.C. 371. However, the following applications and proceedings are not included in the program: international applications under 35 U.S.C. 363, reexamination proceedings, and interference proceedings.

You will need to submit a Customer Number Upload Spreadsheet to associate your current patent applications to your Customer Number. Please go to the Patent EBC Web site and follow the instructions within Step 1 under the heading "Associate Existing Patent Applications to a Customer Number".

The pilot-to-production transition will be transparent to you. You will automatically be part of the e-Office Action program. No action from you is needed. There is no need to opt in again.

Since several areas of the Office have independent mailing processes, participants will continue to receive paper mailings for communications prepared by certain business units including (but not limited to): the PCT Operations Division – International Branch, BPAI for interference proceedings, Central Reexamination Unit (CRU), Office of Enrollment and Discipline, and Office of the Solicitor.

Please refer to sections 10 and 12 of the OG notice

The e-Office Action program requires at least one e-mail address. Up to a maximum of three valid e-mail addresses can be assigned to receive e-mail notifications. For example, these e-mail addresses may be an individual’s e-mail address, a general mailbox, or a docketing department’s e-mail address.

Participants will receive e-mail notifications for any communications prepared by the following participating business units: Technology Centers, the Office of Patent Application Processing (formerly Office of Initial Patent Examination (OIPE)), Office of Data Management (Pre-Grant Publications and Office of Publications), Board of Patent Appeals and Interferences (BPAI) for ex parte appeals of rejections, Office of Petitions, and Office of Licensing & Review.

Yes. Participants in the e-Office Action program can easily opt-out of the program at anytime. From the Details for Customer Number page, participants must select from the menu items: Receive Correspondence via Postal Mail, then review changes, and submit your changes to the qyule最新电信一. Please note that switching repeatedly between electronic and paper communication within a calendar day may result in notification delays. Also, opting out of the program will not stop the distribution of courtesy postcards for any unviewed communication for which an e-mail notification was sent. Should you elect to return to paper communication, it is recommended that one e-mail address remain assigned to the Customer Number in order to deliver e-mail notifications still in process.

Participants will receive an e-mail notification daily for each Customer Number, including weekends, by 8:00 a.m. Eastern Time. An e-mail notification is sent only when there is new Office communication that day for applications associated with the participant’s Customer Number. Once you are opted in, any Office action currently in process will continue to be mailed in a paper format.

The first e-mail notification of Office communication will be generally delivered no earlier than two business days after switching to e-Office Action program. However, this is dependent on the volume of Office communication you receive for applications associated to the Customer Number.

By registering for the e-Office Action program, participant is authorizing the Office to send e-mail notifications of Office communications entered by the participating Office business units in the applications associated with the Customer Number. The e-Office Action program does not, otherwise, change the policy for communication via the Internet set forth in the Manual of Patent Examining Procedure (MPEP) § 502.03. The e-mail notification is simply an automated e-mail sent by the Office. It is not an e-mail sent by the examiner. The program does not alter the Office policy prohibiting an applicant or examiner from engaging in improper e-mail correspondence.

  • Minimizes the risk of delayed or lost Office communication sent by mail
  • e-mail notification expedites the availability of Office communication up to three days faster than communication sent by postal mail
  • Eliminates receipt of paper copies thus reducing paper communication processing errors and docketing time

ePetitions

Faster Petition Processing - Filing an ePetition allows direct input of the requisite filing information into a secure web interface and immediately receiving an ePetition grant. Delays associated with manually processed petitions are avoided.

Immediate Petition Grant upon Submission - Submitted ePetitions are autoprocessed and immediately granted upon submission if all requirements are met. The auto-granting of submitted ePetitions is advantageous for time sensitive petitions.

Instant Feedback on Requirements - Feedback is immediately provided throughout the ePetition filing process to assist in meeting all filing requirements necessary for compliance with petition rules and to assure that fees will not be collected by the office until the petition is acceptable for submission and grant.

An ePetition is an electronically filed petition that automates the petition process and allows petitioners to directly input the requisite information into a secure web interface and immediately receive an ePetition decision if all requirements are met.

  • ePetitions cannot be granted for petitions to revive an abandoned application if:
    • The US application number is for a provisional, design, reexamination, re-issue or, plant application.
    • The US application has issued as a patent.
    • A Notice of Abandonment has not been mailed by the Office.
    • The application has been abandoned for more than 2 years.
    • The reply being submitted with the petition is only an amendment filed after Final Rejection.
  • ePetitions cannot be granted for Reinstatement of an Expired Patent if:
    • The US Patent is expired for more than 2 years.

If an ePetition has been submitted but a completed Electronic Acknowledgement Receipt and Grant Letter is not received, contact the Electronic Business Center at 866‐217‐9197. An attempt to submit the ePetition again may be required. If the second attempt to file the ePetition fails, a paper version of the petition should be filed for review by the Office of Petitions.

If the petition is an urgent petition to Withdraw from Issue and, patent issuance is imminent, a paper petition may be faxed to the Office of Petitions at 571-273-0025. It is recommended to follow up with the Office of Petitions by calling the Office of Petitions Help Desk at 571-272-3282.

The patent electronic filing system is a web-based system accessible through the Electronic Business Center (EBC). The patent electronic filing system allows for filing a petition either electronically or through an ePetition option. Petitions that are filed electronically, but not through the ePetition option, will not benefit from ePetition's immediate petition decision or instant feedback on requirements.

To file an ePetition, the radio button next to “ePetition (for automatic processing and immediate grant, if all petitions requirements are met)” needs to be selected as a Type of Submission for Existing Application/Processing.  A web-based ePetition will be completely fillable online through screens in the patent electronic filing system. Please see for reference.

If you have any questions or concerns regarding filing in the patent electronic filing system, please contact thePatent EBC Monday ‐ Friday, from 6:00 a.m. to midnight Eastern Time, by email[email protected] or telephone 866‐217‐9197.

Yes, an ePetition can be filed subsequent to a non-ePetition petition. The fee must be paid again to process an ePetition. However, the fee paid on the non-ePetition petition may be refunded under 37 CFR 1.26 upon request.

If all items are correctly filed, ePetitions are automatically granted at the time they are filed.

Specific ePetition filing requirements may be found in theWeb-based ePetition Quick Start Guide or by clicking the appropriate link in the above listing of web-based ePetitions.

For Petition to Make Special Based on Age (37 CFR 1.102) and Petition to Accept Unintentionally Delayed Payment of the Maintenance Fee (37 CFR 1.378(c)) a user may file them as an unregistered user of the qyule最新电信一 patent electronic filing system.

For all other ePetitions, the filer must be a registered user of the qyule最新电信一 patent electronic filing system.

Users are strongly advised to transmit their electronic filings sufficiently early in the day to allow time for alternative paper filing when transmission cannot be initiated or correctly completed.

The ability to submit an ePetition under EFS-Web Contingency is not permitted.

  • Request for Withdrawal as Attorney or Agent of Record (37 CFR 1.36)
  • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2))
  • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3))
  • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2) with Assigned Patent Number)
  • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3) with Assigned Patent Number)
  • Petition to Accept Late Payment of Issue Fee -Unintentional Late Payment (37 CFR 1.137(a))
  • Petition for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))
  • Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(a))
  • Petition for Revival of an Abandoned Patent Application Abandoned Unintentionally(37 CFR 1.137(a)) (For Cases Abandoned After 1st Action and Prior to Notice of Allowance)
  • Petition to Correct Assignee After Payment of Issue Fee (37 CFR 3.81(b))
  • Petition to Accept Unintentional Delayed Payment of the Maintenance Fee (37 CFR 1.378(b))
  • Petition to Make Special Based on Age (37 CFR 1.102)
  • Petition to Accept Unintentionally Delayed Payment of the Maintenance Fee (37 CFR 1.378(c))

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Public users may perform preliminary searches of patent information in a variety of formats including online and print at the绝伦推理电视剧推荐(qyule最新电信一) Public Search Facility located in Alexandria, VA.

Computer workstations provide automated searching of patents issued from 1790 to the current week of issue. Full document text of U.S. patents issued since 1971 and OCR text from 1920 to 1970 may be searched. U.S. patent images from 1790 to the present may be retrieved for viewing or printing. Some foreign patent documents are available.

Annual Indexes of Inventors and various search aids are available in an online format.

The Public Search Facility is located in the Madison East building on the first floor at 600 Dulany St., Alexandria, VA 22313. The telephone number is 571-272-3275.

Users can access the full-text searchable database containing patent information for all U.S. patents granted since 1976 and all patent application publications (first published in March 2001), on the qyule最新电信一 web site at https://ppubs.juliemarsh.net/pubwebapp/static/pages/landing.html.

Inventors can also perform a preliminary search of patents at one of the Patent and Trademark Resource Centers (PTRCs) established throughout the United States. They have classification search tools, automated search aids, and photocopy facilities available to the public. For information on your nearest PTRC you may visit PTRC web site at http://juliemarsh.net/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrcs.

You may retain a patent attorney or agent to conduct a complete search. For information on registered patent attorneys and agents in your area, you may visit the Office of Enrollment and Discipline web site at https://oedci.juliemarsh.net/OEDCI/.

Where an attorney or agent of record (or applicant, if he or she is prosecuting the application pro se) changes his or her correspondence address, he or she is responsible for promptly notifying the绝伦推理电视剧推荐of the new correspondence address (including ZIP code number). The notification should also include his or her telephone number. For additional information on change of correspondence address, you may visit the Patents page and then by clicking on "Customer-requested actions" see MPEP Chapter 601.03. Also, you may visit our web site for patent forms , see Form No. PTO/SB/122 (pending application) and PTO/SB/123 (issued patent).

In addition, an address represented by a Customer Number [definition] may be designated as the correspondence address of one or more applications (or patents) or the fee address of one or more allowed applications or patents. In addition, a Customer number representing a list of practitioners may be designated as the practitioners covered by a Power of Attorney in one or more applications or patents. A Customer Number associated with a correspondence address of  an application or patent is the Customer Number used to obtain access to the Private Patent Application Information Retrieval (PAIR) system for that application or patent at http://portal.juliemarsh.net/external/portal/pair . See MPEP § 1730 for additional information regarding PAIR . To use Patent Center for change of correspondence address please see the .

Users can access searchable databases containing full-text patent information for U.S. patents granted since 1976 and full-page images since 1790 on the U.S. Patent and Trademark Office (qyule最新电信一) web site atwww.juliemarsh.net/go/pats.

At the Public Search Facility in Alexandria, Virginia, computer workstations provide automated searching of patents issued from 1790 to the current week of issue using the patent examiner systems Web-based Examiner Search Tool, (WEST) and Examiner Automated Search Tool (EAST), the qyule最新电信一 web site, and related applications. Full document text may be searched on U.S. patents issued since 1971 and OCR text from 1920 to 1970. U. S. patent images from 1790 to the present may be retrieved for viewing or printing. Some foreign patent documents may be searched using EAST and WEST. Official Gazettes, Annual Indexes (of Inventors), the Manual of Classification and its subject matter index, and other search aids are available in various formats.

A search may also be conducted at a Patent and Trademark Resource Center (PTRC) established throughout the United States. They also have classification search tools, automated search aids, and photocopy facilities available to the public. For additional information on the nearest PTRC, you may visit the PTRC web site at: http://juliemarsh.net/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrcs.

School and group tours are welcome at the National Inventors Hall of Fame Museum. Please contact[email protected] or the Office of the Chief Communications Officer at 571-272-8400at least two weeks ahead of time to schedule a tour.

The museum is completely free and open to the public. It is located in the atrium of the qyule最新电信一's Madison Building, 600 Dulany Street, Alexandria, Va., and is easily accessible from the King Street and Eisenhower Avenue Metro stations. The museum is open Monday to Friday from 10 a.m. to 5 p.m. and Saturdays from 11 a.m. to 3 p.m. The museum is closed Sundays and federal holidays. There is a gift shop.

Please check our location page to obtain information about local mass transportation systems, to view a larger area map, and to obtain driving and parking directions.

For applications filed on or after June 8, 1995, utility and plant patents are granted for a term which begins with the date of the grant and usually ends 20 years from the date you first applied for the patent subject to the payment of appropriate maintenance fees for a utility patent. There are no maintenance fees for plant patents . Design patents last 15 years from the date you are granted the patent. No maintenance fees are required for design patents.

Note: Patents in force on June 8, 1995 and patents issued thereafter on applications filed prior to June 8, 1995 automatically have a term that is the greater of the twenty year term discussed above or seventeen years from the patent grant.

Yes. Although a complete claim listing is only required whenever changes are made to any claims, one may be submitted in a reply to an Office action where no changes are being made. It is beneficial to the examiner (and all viewers of the electronic file) to have the most up-to-date set of claims in the most recent paper submitted by the applicant. Note that the claim listing in this situation would not include any claims with markings or any claims with the status identifiers of (new) or (currently amended).

Yes, if the after-final amendment is filed in compliance with the previous version of 37 CFR 1.121 with a certificate of mailing date before July 30, 2003, the Office will enter the amendment as a compliant amendment when the RCE is entered.

Yes, if the amendment is filed in compliance with the previous version of 37 CFR 1.121 with a certificate of mailing date before July 30, 2003, the amendment will be accepted as a compliant amendment. See Pre-OG notice, Amendments Permitted under the Revised Amendment Practice and Treatment of Non-Compliant Amendments (signed July 11, 2003) available on the qyule最新电信一 website.

The status identifier, "original", should be used for renumbered claims that have not been amended. The status identifier, ""previously presented"", should be used for renumbered claims that were previously amended but are not being amended in the amendment. The status identifier, "currently amended", should be used for renumbered claims that are being amended in the amendment.

No, a preliminary amendment cannot be made in a transmittal letter or form for the filing of an application. The amendment to the specification that adds the specific reference to the parent application in the first sentence of the specification following the title must be provided on a separate sheet of paper in compliance with revised 37 CFR 1.121. Applicant may wish to provide the specific reference in an application data sheet (ADS) under 37 CFR 1.76 or in a new specification instead of filing a copy of the specification of the parent application with a preliminary amendment. The Office transmittal forms will no longer permit any preliminary amendment to be made in the transmittal form. If applicants are using a transmittal form that provides a box for a preliminary amendment, applicants are advised not to use such box, but to provide the preliminary amendment on a separate sheet of paper in compliance with revised 37 CFR 1.121.

No, a Letter to the Office Draftsman is not required. The amendment to the drawings must include: (1) replacement figures which incorporate the desired changes, and (2) an explanation of the changes either in the drawing amendments or remarks section of the amendment.

Yes. For patent forms information, you may visit the U.S. Patent and Trademark Office Web site at http://juliemarsh.net/go/forms. Presently, only a few forms are fillable on-line.

For information regarding the official filing receipt for a patent application, please call Office of Initial Patent Examination, Customer Services between 8:30 a.m. - 5 o'clock p.m. Eastern Time on normal business days. The number is (571) 272-4000.

Yes, the preliminary amendment must be filed in compliance with revised 37 CFR 1.121 with a complete listing of the claims. The new claims should have the status identifier, "new". Applicant should not use the status identifier, "original" for the claims added in the preliminary amendment, even if the application was filed with an oath or declaration that has a statement referring to the preliminary amendment. If applicant files a subsequent amendment that includes a complete listing of the claims, applicant should use the status identifier, "previously presented" (if the claims added in the preliminary amendment are not being amended), or "currently amended" (if the claims added in the preliminary amendment are being amended). Filing an application with a preliminary amendment is not recommended. Applicants are encouraged to file the application with a specification that includes the desired set of claims. See File Continuation or Divisional Application with a New Specification and Copy of Oath or Declaration from Prior Application, 1251 Off. Gaz. Pat. Office 54 (October 9, 2001).

The Guide for the Preparation of Patent Drawings is currently out of print. This publication, when available, can be ordered from the Superintendent of Documents, U.S. Government Printing Office, Washington, DC 20402, or you may call 202 512-1800. The Guide to Filing A Utility Patent Application also contains information on drawing requirements. This publication is available for your use at a Patent and Trademark Depository Library (PTDL) in your area or on the qyule最新电信一 website at . For information on your nearest PTDL, you may visit PTDL Web site at http://juliemarsh.net/go/ptdl. Additionally, the rules for patent drawings are included in title 37 of the Code of Federal Regulations, sections 1.81, 1.83, 1.84 and 1.85, and drawings are also addressed in Section 608.02 of the Manual of Patent Examining Procedure (MPEP)(the MPEP includes a copy of title 37). The MPEP is available on our Web site at http://juliemarsh.net/web/offices/pac/mpep/mpep.htm.

For additional information, you may contact the qyule最新电信一 Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

Copies of patents or patent application publications, shipped via the U.S. Postal Service, may be purchased for $3 each. To order a patent copy, you must provide the patent number. To order a copy of a patent application publication, you must provide the publication number. Checks or money orders should be payable to the Director of Patents and Trademarks. Copies can also be paid for by using VISA®, MasterCard®, American Express®, Discover® credit cards, Electronic Funds Transfer (EFT) or a qyule最新电信一 deposit account.

Orders may be placed via the following methods:

Order copies online

E-mail to [email protected]

Phone:(571) 272-3150 or (800) 972-6382. Staff is available Monday through Friday from 8:30 AM - 5:00 PM Eastern Time.

Fax: (571) 273-3250 . Fax service is operational 24 hours daily.

Mail:

Mail Stop Document Services
Director of the U S Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450.

For information about expedited delivery services, such as overnight courier, please call (571) 272-3150 between 8:30 AM - 8:00 PM Eastern Time, Monday - Friday.

For additional patent copy information, you may visit Products and Services and to conduct a patent search you may visit Search Patents.

The U.S. Patent and Trademark Office issues only one original grant copy of a patent to the inventor. However, you may obtain a certified (blue ribbon and seal copy) by contacting the Certification Division at 800 972-6382 or (571) 272-3150.

On petition, the Office will create a replacement patent grant. Applicant must file a petition under 37 CFR 1.182, with a request for a replacement patent grant and a statement that the original patent grant was lost or stolen. The current petition fee set forth in 37 CFR 1.17(f) (fee code 122) should also be provided. Petitions under 37 CFR 1.182 are treated by the Office of Petitions. The telephone number for the Office of Petitions is (571) 272-3282.

A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Upon request, the U.S. Patent and Trademark Office (qyule最新电信一) will send information on utility and design patent applications including forms for filing applications. To request this information, you may contact the qyule最新电信一 Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

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All qyule最新电信一 forms are available on our Forms page.

青娱乐在线官网福利社入口

Inventors may apply for one of two types of patent applications: (1) A nonprovisional application, which begins the examination process and may lead to a patent and (2) A provisional application, which establishes a filing date but does not begin the examination process. Both types of patent applications can be filed either electronically by using the Patent Center https://patentcenter.juliemarsh.net (for provisional applications, effective January 1, 2002) or in writing to the Commissioner for Patents. You can also request that the U.S. Patent and Trademark Office (qyule最新电信一) send informational materials providing a broad overview of the process of obtaining a United States patent, including general requirements and a listing of the depository libraries. For a listing of the information available, visit the qyule最新电信一 Web site at http://juliemarsh.net/patent .

The qyule最新电信一 does not compare the contents of a provisional application with a later-filed nonprovisional application for security review purposes. If applicant obtains a new license on a later-filed application, applicant needs to make a determination of which license controls. That is, if the subject matter of the nonprovisional application does not change the general nature of the invention of the provisional application such that it would have been made available to a defense agency, then the license date of the provisional application would control. In the instance described above, the latter license would control if the documents were not identical because an implied license is under the provisions of 37 CFR 5.15(b). 37 CFR 5.15(b) does not allow for additional subject matter beyond what was originally submitted.

No. Petitions for expedited license filed without a corresponding U.S. application are assigned control numbers - the letter "P" followed by a 5 digit number. These petitions are processed and then stored. When the applicant files a subsequent U.S. patent application, the L&R security screener has no way of determining whether a previous petition was filed or whether the subject matter is identical. At this time, all petitions for license are treated separately and distinct from any other previous or subsequent petition.

First, review the list of what can and cannot be patented and determine if your invention falls into one of those categories.

Second, learn the basics of the patenting process from the materials provided by the qyule最新电信一 at 800-PTO-9199 or 703-308-HELP or underPatent Basics.

Next, a search of all previous public disclosures (prior art) including, but not limited to previously patented inventions in the U.S. (prior art) should be conducted to determine if your invention has been publicly disclosed and thus is not patentable. A search of foreign patents and printed publications should also be conducted. While a search of the prior art before the filing of an application is not required, it is advisable to do so. A registered attorney or agent is often a useful resource for performance of a patentability search. After an application is filed, the qyule最新电信一 will conduct a search as part of the official examination process. Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill. The best advice for the novice is to contact the nearest Patent and Trademark Resource Center (PTRC) and seek out search experts to help in setting up a search strategy. If you are in the Washington, D.C., area, the qyule最新电信一 provides public access to collections of patents, trademarks, and other documents at its Search Facilities located in Alexandria, Virginia. These facilities are open weekdays (except holidays) from 8:00 a.m. to 8:00 p.m.

Disclaimer
We have provided links to the site below because it has information that may be of interest to our users. The qyule最新电信一 does not necessarily endorse the views expressed or the facts presented on this site. Further, the qyule最新电信一 does not endorse any commercial products that may be advertised or available on this site.

It is possible, however difficult, for you to conduct your own search. For an introduction to patent searching for the novice please refer to the Patent and Trademark Depository at the Richard W. McKinney Engineering Library, the University of Texas at Austin . Although some of the instructions given here may be unique to the Austin library and the focus of this introduction is on the Cassis CD-ROM products, the fundamentals of patent searching remain the same for any location.

You should not assume that your invention has not been patented even if you find no evidence of it being publicly disclosed. It's important to remember that a thorough examination at the qyule最新电信一 may uncover U.S. and foreign patents as well as non-patent literature.

A petition for an expedited foreign filing license based on a pending patent application (37 CFR 5.14), or for material not related to any pending application (37 CFR 5.13), may be filed by:  (1) facsimile transmission; (2) regular mail; (3) hand-delivery to the Customer Service Window; or (4) the qyule最新电信一 patent electronic filing systems (EFS-Web or Patent Center) if an application is on file.  Filing via facsimile transmission (fax) is highly encouraged.

Facsimiles must be sent to: 571-270-9959.

Hand delivery to Licensing and Review in the Knox Building is temporarily unavailable for so long as the qyule最新电信一 headquarters campus remains closed to the public. Currently, hand deliveries may be made at the Customer Service Window in the Randolph Building, located at 401 Dulany Street, Alexandria, VA 22314.

Requests submitted by regular mail must be addressed to:
Mail Stop: L&R
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

All licenses will be mailed to the appropriate correspondence address, and a courtesy copy may be provided by facsimile if such notification is requested.

If you have any questions about filing a petition for an expedited foreign filing license or the status of such a petition, please call 571-272-8203.

A patent is a limited duration property right relating to an invention, granted by the绝伦推理电视剧推荐in exchange for public disclosure of the invention. For more information, click here.

A patent may be applied for only in the name(s) of the actual inventor(s).

What can be patented - utility patents are provided for a new, nonobvious and useful:

  • Process
  • Machine
  • Article of manufacture
  • Composition of matter
  • Improvement of any of the above

Note: In addition to utility patents, encompassing one of the categories above, patent protection is available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties by design and plant patents.

What cannot be patented:

  • Laws of nature
  • Physical phenomena
  • Abstract ideas
  • Literary, dramatic, musical, and artistic works (these can be Copyright protected). Go to the Copyright Office .
  • Inventions which are:
    • Not useful (such as perpetual motion machines); or
    • Offensive to public morality

Invention must also be:

  • Novel
  • Nonobvious
  • Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
  • Claimed by the inventor in clear and definite terms

No, applicant must file all papers directly with Licensing and Review in accordance with the terms of the secrecy order.

It is not the role of Licensing and Review to determine the need for a license. Rather, the need for a license is a legal decision that lies with the applicant.

35 USC 181 requires the qyule最新电信一 to refer any application which it deems the publication of which may be detrimental to national security to an appropriate defense agency for review. If that defense agency makes a positive determination that publication (or export in the form of or which may take the form of a patent application) would be detrimental to national security, that agency would recommend that the application be subject to a secrecy order. If a secrecy order is issued on an application, separate letters to each inventor and the attorney or agent of record will be mailed notifying them of such.

Although publication of the application will not occur until this determination has been completed, 35 USC 184 grants an implicit foreign filing license at 6 months from the filing of the application in the U.S. Therefore, the defense agencies strive to complete this processing within 6 months. However, given the large number of cases forwarded to them, this process often takes longer. Applicant wishing to make inquiries on the timeliness of this process should send an email to [email protected]. The qyule最新电信一 has very limited authority to terminate any security review.

L&R will process what it receives. Applicants must be aware of the license scope that will be afforded by the license, if granted. See 37 CFR 5.15(a) and (b). It is strongly suggested that applicant submit a document that is as closely related as possible to what will be included in the foreign filing. Also, submissions must be in the English language.

See 37 CFR 5.15(a) and 5.15(b) for the various license scopes. Applicant is reminded that a license only covers a filing in a foreign country and activities related to such filing. A license from the qyule最新电信一 does not cover sending information abroad for the preparation of a filing in the U.S.

No, applicant must file papers directly with Licensing and Review in accordance with the terms of the secrecy order.

No, 35 U.S.C. 184 merely requires applicant to obtain a license from the qyule最新电信一 prior to filing in a foreign country. This may be done in accordance with 37 CFR 5.13.

Yes, a license for the qyule最新电信一 is not country specific. However, applicant must also abide by the various regulations and restrictions related to sending information to certain countries. For more information, please contact the Bureau of Foreign Assets at the Department of Treasury, the Bureau of Industry and Security at the Department of Commerce, or both.

No. The delegation of authority to the qyule最新电信一 from the Bureau of Industry and Security (BIS) does not provide for this. Applicants are directed to BIS for licensing requests of this type. They may be reached at 202-482-4811.

Licensing and Review (L&R) strives to process petitions for expedited license within three business days of receipt and all petitions are treated in the order in which they are received. In limited instances, licenses may be processed quicker upon a showing that a bar date is imminent. It is suggested that after filing the petition, applicant alert L&R to the need for special handling.

  • If an expedited decision is not needed, the mere filing of a provisional, design, utility or PCT (in the US receiving office) is considered a petition for a foreign filing license. See 37 CFR 5.12(a).
  • If expedited processing is required, then a separate petition must be submitted to L&R pursuant to 37 CFR 5.12(b).

If applicant has a patent application on file, the request for an expedited license may be filed as a follow-on paper to that application. An expedited request for a license where there is no pending application on file cannot be filed thru EFS-Web at this time.

The role of Licensing and Review (L&R) is to administer the Patent Secrecy Act as defined by 35 U.S.C. 181-186 and 37 CFR part 5. The primary function of this Act is to prevent publication of an application as a patent or a patent application publication where such disclosure would be detrimental to U.S. national security. Additionally, the Act provides for the licensing of applications for export for the purposes of filing for patents abroad.

The duties of L&R include:

  • Reviewing all applications for patent (provisional, utility, design, PCT (where the U.S. is the receiving office)) to determine whether a foreign filing license may be granted;
  • Managing all existing secrecy orders pursuant to 35 U.S.C. 181 and 37 CFR part 5;
  • Treating all petitions for expedited foreign filing licenses pursuant to 37 CFR 5.12-5.14; and
  • Policing the property rights of the National Aeronautics and Space Administration (NASA) and the Department of Energy (DOE) by administering a portion of the NASA Act as provided for in 42 U.S.C. 2457, and a portion of the Atomic Energy Act as provided for in 42 U.S.C. 2181-2182.

A patent for an invention is a grant of property rights by the U.S. Government through the U.S. Patent and Trademark Office. The patent grant excludes others from making, using, or selling the invention in the United States. A utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant. The right conferred by the patent grant extends throughout the United States. The terms "Patent Pending" and "Patent Applied For" are used to inform the public that an application for a patent has been filed. Patent protection does not start until the actual grant of a patent. Marking of an article as patented, when it is not, is illegal and subject to penalty.

A patent cannot be obtained on a mere idea or suggestion. Patent applications are examined for both technical and legal merit. Prior to filing a patent application, a search of existing patents can be conducted at the qyule最新电信一 Patent Search Room or at a Patent and Trademark Depository Library in your area. For additional information on patents, you may visit the qyule最新电信一 Web site at www.juliemarsh.net/main/patents.htm.

The rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country. An inventor who wants patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. U.S. businesses and stakeholders who are encountering difficulties in protecting or enforcing intellectual property rights in a foreign country are encouraged to consult the IP Attaché pages of the qyule最新电信一 website.

qyule最新电信一福利在线

The U.S. Patent and Trademark Office (qyule最新电信一) is pleased to present Patent Center. Patent Center has a private section that provides a qyule最新电信一/Internet infrastructure capability to securely provide patent application status information to qyule最新电信一 customers with a customer number associated with the correspondence address for their application and the appropriate software tools. Contact the Patent Electronic Business Center (EBC) at (571) 272-4100 to learn more.

Patent Center also has a guest access, public section to provide the same information to the public once an application has issued as a patent or published as a patent application publication. Once you receive a patent filing receipt containing the application number of your application, you may check on the status of a pending application once you obtain the appropriate tools.

You may also call the examiner assigned to your patent application, and if this information is not known, you may call the File Information Unit at (703) 308-2733. For additional information, you may contact the qyule最新电信一 Contact Center (UCC) and request to be transferred to the Inventors Assistance Center (IAC). IAC representatives are available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:30 p.m. Eastern Time.

The U.S. Patent and Trademark Office (qyule最新电信一) Patent and Trademark Resource Centers Program (PTRCP) administers a nationwide network of public, state and academic libraries designated as Patent and Trademark Resource Centers (PTRCs).

PTRCs are located in 48 states, the District of Columbia and Puerto Rico where collections of patents may be examined. PTRCs are open to the public and provide access to automated search systems to assist with your search. Call the resource center before visiting to determine hours of operation, services, and fees. For additional information on the nearest PTRC, visit the PTRC web pages. You may perform preliminary searches of patent information on the qyule最新电信一 web site.

A patent is intellectual property that may be sold or bequeathed to heirs of a deceased patentee or patent owner. The patent law provides for the transfer or sale of a patent or patent application by means of a legal document called an assignment. A properly executed assignment transfers all rights from the existing owner to another person. When the patent is transferred, the assignee becomes the new owner of the patent and has the same rights as the original owner.

The U.S. Patent and Trademark Office (qyule最新电信一) records all assignment documents and any document that affects title. Documents that affect title are, but are not limited to, mergers, changes of names, security agreements, various liens, licenses, probate documents, and bankruptcy petitions. For information on filing a patent assignment or documents affecting title, please call the Assignment Recordation Branch at (571) 272-3350 between 8:30 a.m. and 5 p.m. ET Monday through Friday, except Federal holidays.

To search patent assignment records online, please use Patent Assignment Search.

The qyule最新电信一 Public Search Facility maintains assignment ownership records. Located on the first floor of the Madison East building at 600 Dulany St. , Alexandria , VA 22313, the Public Search Facility is open to the public from 8:00 a.m. to 8 p.m. , Monday through Friday, except Federal holidays. Assignment information is also available at the Patent and Trademark Resource Centers throughout the United States.

For additional patent assignment information, you may visit the qyule最新电信一 web site at http://juliemarsh.net/patents-maintaining-patent/patents-assignments-change-search-ownership.

A file history of a patent or a published application for patent may also be obtained in person through the File Information Unit (FIU). The FIU is on the third floor of the Randolph Square Building, 2800 S. Randolph St., Arlington, Virginia. You may contact the FIU through their direct line at 703-756-1100.

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Fees vary depending on the type of patent application you submit. Fees may also vary according to the way you "claim" your invention. More information on filing fees and the number and type of claims.

There are three basic fees for utility patents:

  • The filing fee, which is non-refundable whether or not a patent is granted. (This is the cost to have your invention "examined" by the US Patent and Trademark Office - remember, you may or may not get a patent!)
  • The issue fee (you pay this only if your application is allowed)
  • Maintenance fees (paid at 3 1/2, 7 1/2, and 11 1/2 years after your patent is granted - these fees "maintain" your legal protection).
  • Additional fees may be required.

You are strongly advised to check the current fee schedule before submitting your application.

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A. Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations you can obtain this information by writing to the governor of your state.

A. No. The Office cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. The Office, however, will publish for a fee, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. In addition, the Office of Independent Inventor Programs (OIIP) was established in March 1999 in order to meet the special needs of independent inventors. The OIIP establishes new mechanisms to better disseminate information about the patent and trademark processes and to foster regular communication between the qyule最新电信一 and independent inventors.

A. No. The application must be signed by the true inventor, and filed in the qyule最新电信一, in the inventor's name. This is the person who furnishes the ideas (e.g. the first person in the above fact pattern), not the employer or the person who furnishes the money.

A. No. This is a matter between you and your patent attorney or agent in which the Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, and (c) qyule最新电信一 prosecution.

A. No. The Office has no control over such organizations. The Office will publish complaints regarding invention promoters and replies from the invention promoters. The Office will not undertake any investigation of the invention promoters. Questions or complaints should be directed to the Mail Stop 24; Director of the U.S. Patent and Trademark Office; P.O. Box 1450; Alexandria, VA 22313-1450 or call at 866-767-3848 .

It is advisable, however, to check on the reputation of invention promotion firms before making any commitments. It is suggested that you obtain this information from the Better Business Bureau of the city in which the organization is located, or from the bureau of commerce and industry or bureau of consumer affairs of the state in which the organization has its place of business. You may also undertake to make sure that you are dealing with reliable people by asking your own patent attorney or agent or by asking others who may know them.

A. Yes. In your own or neighboring communities you may inquire of such organizations as chambers of commerce and banks. Many communities have locally financed industrial development organizations, that can help you locate manufacturers and individuals who might be interested in promoting your idea.

A. The Office will answer an applicant's inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the Office will not correspond with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.

A. No. Most business with the Office is conducted by written correspondence. Interviews regarding pending applications can be arranged with examiners if necessary and are often helpful.

A. If each had a share in the ideas forming the invention as defined in the claims - even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.

A. They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the qyule最新电信一. The law imposes a fine on those who use these terms falsely to deceive the public.

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No. The Office does not intend to correspond with third parties about the information they submitted either to inform the third parties of whether it intends to issue a certificate of correction or to issue a denial of any request for issuance of a certificate of correction that may accompanying the information. The Office will confirm to the party submitting such information that such information has in fact been received by the Office if a stamped, self-addressed post card has been submitted. See MPEP 503. The status of the patented file, including issuance of any certificate of correction, may be monitored via the web using the Patent Application Information Retrieval (PAIR) system or Patent Center.

(1) Nothing is necessary to establish small entity status. The change to 37 CFR 1.27 applies to the application as of September 8, 2000, that is, the applicant is considered to have established small entity status in the application on September 8, 2000.

(2) The (small entity) surcharge under 37 CFR 1.16 is required. The appropriate basic filing fee was not present on filing (since the application was filed before September 8, 2000, and small entity status was not established until September 8, 2000), and 37 CFR 1.53(f) (or (g)) requires payment of the surcharge under 37 CFR 1.16(e) (or (l)) if the appropriate basic filing fee is not present on filing.

(3) No. Regardless of whether the Office has issued a Notice to File Missing Parts of Application as of September 8, 2000, the appropriate basic filing fee was not present on filing and 37 CFR 1.53(f) (or (g)) requires payment of the surcharge under 37 CFR 1.16(e) (or (l)) if the appropriate basic filing fee is not present on filing.

No. If the method for numbering paragraphs suggested by the Office is used, a single new paragraph replacing a single original paragraph would retain the same number as the paragraph being replaced. If more than one paragraph replaces a single original paragraph, the additional paragraphs would be numbered with sequential integers following a single decimal, e.g., [0071], [0071.1] and [0071.2] would replace original paragraph [0071]. Original unamended paragraphs before and after the affected paragraph would retain their original numbering.

Amendment of a reissue specification at the time of filing can be accomplished either by (1) paragraph replacement in a preliminary amendment, or (2) ‚"cut and paste‚" of a two column copy of the original patent, whereby minor changes are inserted at a cut portion of a column and the remainder of the column rejoined. Unlike amendment practice for non-reissue applications, no clean copy of a replacement paragraph should be submitted; rather, underlining and bracketing (to show additions and deletions, respectively) must be employed in the paragraph to be inserted. No accompanying marked-up version of the amended paragraph should be submitted.

Yes. Even though the original patent claims have been broadened, they are still considered as being drawn to the same invention as was claimed in the original patent. Short of a disclaimer of the original claims being filed in the reissue application, claims to the invention claimed in the original patent (even if broadened) will always be considered the elected invention in a first reissue application which additionally contains claims to another invention. If the constructively elected broadened claims correct a legitimate error in the original patent, the first reissue application may be able to issue prior to the completed examination of any later filed divisional applications. If no error is corrected by the constructively elected claims, and the claims are found to be allowable, prosecution of the first reissue application may have to be suspended pending the completion of the examination of any later filed divisional application, at which time the claims will be recombined into a single application for issuance.

No. The Office recommends that you not rely solely on the payment of the exact small entity amount for the basic filing fee (although you can so rely).

A small entity need no longer obtain a specialized form to request small entity status. Small entity status can be obtained by a simple one sentence request for such status. The request need not take any particular form, it just must convey the concept that small entity status is being requested and should be submitted in an easily recognizable manner.

For the convenience of applicants, the Office has reformatted some other existing forms, such as the application transmittal forms, to provide a check box for claiming small entity status.

Eugenia Jones (Legal Advisor, Office of Patent Legal Administration, (703) 306-5586)

To appoint a power of attorney or authorize an agent to act for you, you can use form PTO/SB/81 "Power of Attorney or Authorization of Agent" (also on the qyule最新电信一's printable forms website). The power of the attorney portion was removed from the declaration forms because while all the inventors must sign a declaration form, it is not always required that all the inventors sign a power of attorney. For example, it is acceptable to have the assignee(s) appoint the power of attorney. See 37 CFR 3.71. The combined declaration and power of attorney forms will still be accepted by the Office.

The domestic priority box was removed from the declaration forms because it is not required by the statutes or by the related rules to state a domestic priority claim in the declaration. The presence of this box created confusion, and may have caused unnecessary objections to declarations when this box was not filled out and applicant was indeed claiming domestic priority to another application. To claim domestic priority under 35 U.S.C. 119(e) and 120, applicant must comply with 37 CFR 1.78 which requires, in part, that the priority claim information be in either the first line of the specification or in an application data sheet.

If a preliminary amendment (with a date of certificate of mailing on or after 3/1/01) is non-compliant, the applicant will be given one month from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to resubmit the amendment in compliance with § 1.121. This period of time is not extendable. The examination on the merits of the application may commence without the entry of the preliminary amendment unless the applicant resubmits the amendment in compliance with § 1.121 within the one-month time period.

If an amendment (with a date of certificate of mailing on or after 3/1/01) filed in response to a non-final Office action is a bona fide reply, but is non-compliant with 37 CFR 1.121, the applicant will be given one-month (or 30 days, if longer) from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to correct the non-compliance in order to avoid abandonment. This period of time is extendable under 37 CFR 1.136(a).

If an amendment after final (with a date of certificate of mailing on or after 3/1/01) is non-compliant, the unentered amendment will be forwarded to the examiner. The examiner will address the non-compliance in an Advisory Action. Additional time will not be given to make the amendment compliant with the rule. Applicant will have the remainder of the time period (if any) set forth in the final Office action to correct the non-compliance.

If an amendment under 37 CFR 1.312 (with a date of certificate of mailing on or after 3/1/01) filed before the payment of issue fee is non-compliant, the 312 amendment will be addressed by the examiner in a Response to 312 Amendment (PTO-271). Additional time will not be given to correct the non-compliance. Applicant will have the remainder of the time period (if any) set forth in the Notice of Allowance to correct the non-compliance before, or filed with, the payment of issue fee.

You must timely respond to the Notice to File Missing Parts to avoid abandonment of the application. Your response may request reevaluation of your prior attempt to claim small entity status since the Office will not on its own reevaluate your prior attempt to claim small entity status. Additionally, the response should include a new written assertion of entitlement to small entity status (e.g., Your attempt to claim small entity status while being ineffective under the former rule, is effective under the amended rule since an unsigned small entity statement accompanied application papers that were signed.).

A small entity surcharge should also be submitted since the surcharge is owed even if the Office accords small entity status, pursuant to the rule change, based on the previous ineffective attempt to claim small entity status.

The abstract may not exceed 150 words in length. This is a departure from the former 37 CFR 1.72, which allowed an abstract to be up to 250 words in length. The reduction in the number of words allowed in the abstract is necessary to harmonize qyule最新电信一 practice with PCT guidelines.

After the effective date of the rule change, the latest amended version of a claim must be presented in clean form, including all changes made by the current, as well as any earlier, amendment. A marked-up version showing changes made by only the current amendment must accompany the clean version.

Applicants will also be able to submit a clean set of all pending claims, consolidating all previous versions of pending claims from a series of separate amendments into a single clean version in a single amendment paper. This submission of a clean version of all of the pending claims will be construed as directing the cancellation of all previous versions of any pending claims. No marked-up version will be required to accompany the clean version where no changes other than the consolidation are being made.

In either Word 97 or Word 2000, open the document to be amended. Go to Tools and select Track Changes then Highlight Changes from the pull-down menu. Place a check mark before all three selections in the Highlight Changes dialog box (1. Track Changes while editing; 2. Highlight changes on screen; 3. Highlight changes in printed document). Under "Options" in the same box, select "underline" for inserted text, and "strikethrough" for deleted text. Click on "OK." Click on "OK" again to return to the document. Proceed to amend the document. The document can now be printed showing the underlining and strikethrough. This is the "marked-up version."
To print the "clean version," go back to the Highlight Changes box under Tools and remove the check mark before "Highlight changes in printed document." Click "OK" and print the document. This is the "clean version" of the amended document, and does not include any markings showing deleted or added subject matter.

The Office will no longer grant or act on a request for transfer of drawings. If good quality copies of the patent drawings are submitted at the time of filing, and the drawing copies satisfy the requirements of § 1.84, the copies will be accepted in lieu of formal drawings, and the reissue patent will be printed using the copies of the drawings.

In order to become of record, the attorney for the assignee should submit all of the following:

(1) § 3.71(a) statement: A statement setting forth that the assignee, by way of its attorney, is entering the record pursuant to 37 CFR 3.71(c), and assignee, by way of its attorney, wishes to conduct and control the prosecution pursuant to § 3.71(a) to the exclusion of any other entity.
(2) § 3.73(b) statement: A statement under § 3.73(b) establishing the assignee as the owner of the application; user form PTO/SB/96 is recommended for this purpose.
(3) Power of attorney: A power of attorney from the assignee to the attorney or to practitioners of a customer number; user form PTO/SB/81 is recommended for this purpose.
(4) Correspondence address: The correspondence address to be used for the application should be set forth; user form PTO/SB/121 is recommended for this purpose.

These four submissions can be made as separate papers, e.g., using the above-recommended PTO/SB forms where appropriate, or one or more of papers (1) - (4) may be consolidated.

The granting of the power of attorney by the assignee to the attorney (rather than by the inventors to the attorney) will preclude any possible conflict of interest arising from practitioner being paid by the assignee yet seeming to represent the inventors. It will also preclude the inventor from revoking the power and appointing another attorney against the wishes of the assignee.

It is to be noted that the current § 1.63 declaration form no longer contains a space for power of attorney from the inventors.

The original patent claims should be submitted in each of the multiple reissue applications as either (1) unamended, (2) amended (including underlined and/or bracketed material, or (3) deleted (bracketed) claims. They should retain their original numbering in each of the multiple reissues. Claims added to any of the reissues should be numbered beginning with the next highest number following the last original claim. Unamended original claims may only appear in one of the reissue applications for examination.

If an amendment after final (with a date of certificate of mailing on or after 3/1/01) is a bona fide reply meeting the reply requirement under 37 CFR 1.111, but is non-compliant with § 1.121, the amendment after final could be considered as a proper submission for a RCE under 37 CFR 1.114. The Office will process the RCE as a proper RCE and withdraw the finality of the last Office action. Applicant will be given one-month (or 30 days, if longer) from the mailing date of the Notice of Non-Compliant Amendment (37 CFR 1.121) to correct the non-compliance in order to avoid abandonment. This period of time is extendable under 37 CFR 1.136(a).

No. A fee has not been imposed for submission of information by a third party.

Section headings may be added to the specification by merely identifying the precise location for entry followed by the clean version of the exact heading to be entered. The Legal Instruments Examiner (LIE) will enter the heading as a block insert. Applicants are not required to add headings by total paragraph or section replacement, nor is a marked-up version needed.

The Commissioner may pursuant to 35 U.S.C. 254 issue a certificate of correction to correct a mistake in a patent incurred through the fault of the Office, which mistake is clearly disclosed in the records of the Office, (1) At the request of the patentee or the patentee's assignee, (2) Acting sua sponte for mistakes that the Office discovers, and (3) Acting on information about a mistake supplied by a third party.

The amendment may be considered not fully responsive and treated by the examiner under 37 CFR 1.135(c). The examiner, however, will not give applicant additional time for correcting amendments submitted after final rejection. See MPEP Sec. 714.03.

Mandatory compliance with the revised rule is not required until March 1, 2001. It is suggested, however, that applicants adopt the revised procedures on or after November 7, 2000, in order to adjust to the changes in amendment practice. The time period prior to November 7 will be used by the Office to train technical support personnel on the changes of the new rule.

On or after March 1, 2001, all amendments must comply with revised § 1.121.

Yes. At the very least, recent releases of Word (Office 97 or later) and WordPerfect (9.0) have features for automatically numbering paragraphs.

When an application is originally filed with an abstract having more than 150 words, the Office of Initial Patent Examination (OIPE) will send applicant a notice to correct the abstract (with a period for reply of two months). The application file will be held in OIPE and not released to the assigned Technology Center for examination until an acceptable abstract is filed. The mere presence of an abstract which fails to comply with amended § 1.72 will not prevent an application from being accorded a filing date. It will, however, delay the initiation of the examination. Failure to comply to the notice within 3 months, in an application subject to Patent Term Adjustment, may cause a reduction of any patent term adjustment.

Applicant should file a paper under 37 CFR 1.28(c) requesting that small entity status be withdrawn and pay the remaining amount owed for the filing fee as a large entity. A surcharge is not required.

Yes. The Office will not issue a certification of correction under 37 CFR 1.322 without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard.

All applications with drawings need to be reviewed in OIPE to determine whether the drawings are capable of reproduction (can be copied and/or scanned in black and white) and are in the English language. Further compliance with 37 CFR 1.84 will not be required by OIPE. Reproducable drawings are required even if an application is not going to be published, so that the Office will be able to provide a certified copy of the application for foreign priority and other purposes. Furthermore, since applicants may rescind a non-publication request, all applications need to be reviewed according to the same standards regardless of whether they are to be published. In addition, an English translation of the application is required pursuant to 37 CFR 1.52(d)(1). Aside from the non-English text and for the need to have a black and white copy of color drawings/photographs in plant applications (see 37 CFR 1.165(b)), this drawing review during scanning is the same review that has been performed for several years. The Office does not anticipate requiring very many more drawing corrections in OIPE as a result of pre-grant publication.

As a result of this minimal screening, the Office will not be requiring applicant to submit ‚"formal drawings‚" during preexamination under 37 CFR 1.215(a), the Office will merely require drawings that can be copied and are in the English language. Drawings that are filed in reply to a preexamination notice requiring drawings that can be copied in black and white or are in the English language will be rescanned and included in the patent application publication. If applicant desires to have better drawings included in the pre-grant publication, the drawings will have to be submitted in paper on filing or in electronic form through the Electronic Filing System (EFS) within one month of the filing date of the application, or fourteen months from any priority date claimed 35 U.S.C. §§ 119, 120, 121 or 365(c). See 37 CFR 1.215(c).

Applicants should also note that the Office may require ‚"formal drawings‚" at allowance merely because applicant originally indicated the drawings as informal. In addition, the patent examiner may find errors in the drawings and require correction of the drawings. If the application was filed after May 29, 2000, any formal or corrected drawings filed after allowance will result in a reduction to any patent term adjustment. See 37 CFR 1.704(c)(10).

The small entity forms were deleted because effective September 8, 2000, small entity status can be established at any time by a simple written assertion of entitlement to small entity status. Specific forms, like PTO/SB/9-12, are no longer required but the Office will still accept them as a 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. Several PTO forms, such as the transmittal forms (PTO/SB/5,17,21,50 and 56) and the provisional cover sheet (PTO/SB/16), have been modified to include a box which can be checked to establish small entity status. For more information, see "Simplified Small Entity Status Practice" at http://juliemarsh.net/web/offices/dcom/olia/pbg/cpr.htm .

Small entity status is automatically established as of September 8, 2000. To obtain a refund, applicant must file a refund request in accordance with 37 CFR 1.28(a). 37 CFR 1.28(a) was amended (effective November 7, 2000) to provide for refund requests within three months of the date of payment of the full fee (instead of the former two-month period). The date of payment of the fee is the date of receipt in the Office as defined by 37 CFR 1.6. The date of receipt of an authorization to charge fees starts the period for refunds under 37 CFR 1.28(a). Therefore, applicant must explicitly timely request a refund within three months of the submission of the authorization to charge fees if the request for refund is filed on or after November 7, 2000. Any request for refund under 37 CFR 1.28(a) filed before November 7, 2000, must be filed within two months of the date of payment of the full fee in accordance with the version of 37 CFR 1.28(a) in effect at that time.

No. The Office intends to retain its discretion and may not issue a certificate of correction even if a mistake is identified, particularly if the identified mistake is not a significant one that would justify the cost and time to issue a certificate of correction.

No. Papers containing a submission of information or request for a certificate of correction submitted by a third party will not be made of record in the file that they relate to or be retained by the Office.

Yes. Applicants may continue to use the former small entity forms or similar forms to assert entitlement to small entity status. As the rule change to 37 CFR 1.27 has not changed the requirement for an investigation for entitlement to small entity status, some practitioners have stated that they feel more comfortable using the old form to ensure that a proper investigation is made.

No. If an amendment is filed with a certificate of mailing dated before 3/1/01, the Office will not treat the amendment as non-compliant. Furthermore, if the amendment is an unentered amendment after final and the Office subsequently withdraws the finality of the last Office action after 3/1/01, the Office will not treat the amendment as non-compliant because the certificate of mailing is dated before 3/1/01.

For example, if the applicant subsequently resubmits an amendment after final with a certificate of mailing dated before 3/1/01 as a preliminary amendment in a CPA filed after 3/1/01, the Office will not treat the amendment as non-compliant. Similarly, the Office will not treat the amendment after final as non-compliant if the applicant subsequently submits it as a submission in a RCE under 37 CFR 1.114.

37 CFR 1.27(a)(2)(i) and (ii) are additive requirements and a party seeking to qualify as a small business must meet both requirements as to transfer of rights and SBA requirements.

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When an application is published it will be included in the publicly accessible portion of Patent Center at https://patentcenter.juliemarsh.net .

The publication will be available on the qyule最新电信一 Patent Center .

The contents of an application published under 35 U.S.C. 122(b) are available electronically over the Internet via the Patent Center, if the application is maintained in the Image File Wrapper (IFW) system.

A copy of the file contents or a particular paper within the file of an application published under 35 U.S.C. 122(b) may also be requested electronically over the Internet at http://ebiz1.juliemarsh.net/oems25p/index.html or directly by contacting the Office of Public Records, via telephone at the customer service numbers below, or via mail addressed to the qyule最新电信一, Office of Public Records, P.O. Box 1450 Alexandria, VA 22313-1450. The fee for a copy of a file ($200.00 for the first 400 or fewer pages) is set forth in 37 CFR 1.19(b)(1), the fee for a particular paper ($25.00) is set forth in 37 CFR 1.19(b)(1)(i)(D). No physical access to any paper of a pending published application is permitted. Questions regarding this service should be directed to the Office of Public Records Customer Service Line at (800) 972-6382. Customer Service staff are available between 8:30 a.m. and 8:00 p.m. US Eastern Standard Time. The After Hours Technical Support Line is: (800) 786-9199. Help using the online ordering system is also available online at http://ebiz1.juliemarsh.net/vision-service/ShoppingCart_P/ShowHelp .

If the applicant would like the assignee data to be published, the information must be provided on the application transmittal letter or the application data sheet (ADS) that was filed with the application. The applicant may also submit the information via Private PAIR or Patent Center (Bib-data review prior to publication). If the assignee data is recorded with the Assignment branch only, the information will not be published.

Use of an Application Data Sheet (ADS) assists the Office in identifying appropriate bibliographic information for a patent application for entry into the Office's computer systems. Since the information reflected on a filing receipt (e.g., title) is used for publishing the patent application, use of an ADS can help to ensure that the patent application is printed correctly. In addition, if the bibliographic information for a patent application (e.g., inventor names and residences, title, assignee, and other information shown on the filing receipt) is incorrect, applicants may submit corrections to the bibliographic information through Private Patent Application Information Retrieval (PAIR) system or Patent Center or request a corrected filing receipt. If the information is submitted more than fourteen weeks before the projected publication date, there should be sufficient time for the information to be corrected before the information is forwarded to the printer (about nine weeks before the projected publication date).

For more information on Private PAIR, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://juliemarsh.net/web/offices/dcom/olia/aipa/helpfulhints.htm ). For more information on Patent Center please see the .

If applicants have provided assignment information on the transmittal letter or on an application data sheet, or submitted it through Private PAIR and Patent Center, a field labeled "Assignment for Published Patent Application" will appear after the list of the inventors. If no assignment information has been provided for purposes of printing the patent application publication, this field will not appear.

Applicant should first check the Office's electronic application file (IFW) via Private PAIR or Patent Center to see if the nonpublication request (which must be conspicuous and include a proper certification) is present. If the conspicuous nonpublication request is actually present somewhere in the Office's file but it was improperly not recognized, applicant should contact the Office of Pre-Grant Publication at (703) 605-4283. If the Office's file does not contain the nonpublication request and applicant has evidence (e.g., an itemized post card receipt showing the request and the "Office Date" stamp) that a proper nonpublication request was filed with the Office, applicant should contact the Office of Pre-Grant Publication and file a request for corrected filing receipt accompanied by the evidence and a copy of the nonpublication request.

Once the Office verifies that the nonpublication request was properly filed and it was improperly processed, the Office will withdraw the application from the publication process if there is sufficient time to remove it (e.g., at least 4 weeks prior to the projected publication date shown on the filing receipt). Thus, it is important for applicant to promptly check the filing receipt and notify the Office of Pre-Grant Publication of any improperly processed nonpublication request.

In the private side of PAIR ( https://ppair-my.juliemarsh.net/pair/PrivatePair ), the applicant should choose the Publication Review button, and then the Request Data Change button on the screen. The instructions will then be brought up, with a data entry box in which the changes can be inserted. For instance, the following text should be typed in the box: "An inventor has been omitted. John Doe should be added with a residence of Arlington, VA." Once the entry has been checked for accuracy, the Transmit Request button should be selected, and the information will be electronically sent to the qyule最新电信一. A copy of the request will not be placed in the patent application file, and applicant should only submit a request through Private PAIR to correct information where the computer records show information that is different from the application file. Requests filed through Private PAIR will come into the Electronic Business Center (EBC) Customer Support Center, where the data will be changed in the qyule最新电信一's computer database, and, once the data is corrected, the changes can be displayed in Private PAIR, and the EBC will mail the applicant a corrected filing receipt. The Customer Support Center of the Electronic Business Center can be reached by telephone at 1-866-217-9197 (toll-free) 571-272-4100 (local) 6:00 a.m. to 12:00 midnight, Eastern Time, Monday through Friday. A request for a corrected filing receipt should not be submitted if the request is submitted through Private PAIR, since the Private PAIR request will result in the same correction being made.

For more information on Private PAIR, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83  (August 21, 2001) (available on the Internet at http://juliemarsh.net/web/offices/dcom/olia/aipa/helpfulhints.htm ).

If the error is a contents entry other than the filing date of an application, including a Continued Prosecution Application (CPA), contact the Customer Service Representative (Representative) for the Technology Center (TC) where your application is assigned. If you are alleging that the date shown in Patent Center or Private PAIR is an incorrect date, then the Representative may need documentary evidence (e.g., an Express Mail label or a post card receipt) showing that the paper was received on a certain date. Note that the certificate of mailing date (which may be relied upon for timely filing purposes) is not retained in the qyule最新电信一 PALM records, and that the date a paper is received is the date that the qyule最新电信一 actually received the papers, unless the paper was filed using Express Mail under 37 CFR 1.10. The Representative will obtain the application file wrapper and determine whether there is an error in the qyule最新电信一's records. If there is a date error, the records will be corrected.

If the error is in the filing date of an application, including a CPA, a filing date petition is required. Contact the Office of Petitions by telephone at (703)305-9285 or by fax at (703)308-6916 for further information. If a telephone call is made to correct an Office PALM record, other than correcting such an error, no entries are made in PALM (the computer system used to calculate the Patent Term Adjustment), and there would be no reduction to any patent term adjustment. Note a reduction may apply if applicant repeatedly calls the customer service center concerning an application making frivolous requests, and the processing of the application is delayed. If applicant submits a letter with documentary evidence requesting that the Office PALM records be corrected, this letter is matched with the application, and the letter should be entered in PALM. Such a letter would generally not cause a reduction in PTA, however, if applicant were to repeatedly ask for the date to be changed to the certificate of mailing date, or any other improper date, or file such a letter after allowance, the PTA would be reduced under 37 CFR 1.704(a). There is no fee if the above procedure is followed. The above procedure (of contacting the Customer Service Representative) is not permitted after a notice of allowance has been mailed because the application is forwarded to the Office of Patent Publication after allowance, and thus is not readily available to the TCs. In addition, after a notice of allowance has been mailed, an application for patent term adjustment (and the fee) must be filed to have Office records corrected if the change results in a need to recalculate the patent term adjustment. See 37 CFR 1.705(b).

Applicant can correct the benefit claim during the pendency of the application by submitting an amendment changing the first sentence of the specification (e.g., "This application claims the benefit of the provisional application, 60/xxx,xxx, filed on 12/01/01"). The petition under 37 CFR 1.78(a)(6) and the surcharge would not be required because the Office was able to correctly schedule the application for publication with the relationship given.

If the application has issued as a patent, however, the correction cannot be made.
The claim that one application is a continuation or division of another is a benefit claim under 35 U.S.C. 120, 121, or 365(c), and the term of a patent is measured from the prior application's filing date. Removing the benefit claim under 35 U.S.C. 120, 121, or 365(c) would thus have the effect of lengthening the term of the patent, which cannot be done by Certificate of Correction. Furthermore, removing the benefit claim in a reissue application will not change the term of the patent.

Yes, a petition to revive the later-filed application is not required when applicant is adding a benefit claim by filing an amendment (or an application data sheet) to add the specific reference of the prior-filed nonprovisional application. A petition under 37 CFR 1.78(a)(3), however, is required if the later-filed application is a utility or plant application filed on or after November 29, 2000. If the later-filed application is a utility or plant application filed before November 29, 2000, a petition under 37 CFR 1.182 is required.

Yes. You must pay the publication fee within the time period set forth in the Notice, and may request a refund if the application is not published.

The refund request should be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

Mail Stop PGPUB
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

No. Applicant may be required to submit a copy of the incorporated reference pursuant to 37 CFR 1.57(e), which is more specific than 37 CFR 1.105.

Yes, if the requirements of 37 CFR 1.57(a) are met. Although 37 CFR 1.57(a) provides for the later addition of material from a prior foreign application, the initial absence of the material from the U.S. application must result from inadvertence. The presentation of an amendment to add the subject matter from the foreign application is a certification pursuant to 37 CFR 10.18(b) that the initial omission of such material was due to inadvertence. The Office may inquire as to inadvertence where the record raises an issue in regard thereto. See 69 Fed. Reg. 56481, 56503 at Comment 44 and the Response thereto in the published final rule.

No.

An assignee, for example may take over the prosecution of an application, pursuant to 37 CFR 3.71(a) provided that it establishes ownership of the application to the satisfaction of the Director. See 37 CFR 3.73(b)(1). Such ownership may be established by submitting a copy of an executed assignment, 37 CFR 3.73(b)(1)(i), or a statement specifying the reel and frame number of where the assignment is recorded in the Office, 37 CFR 3.73(b)(1)(ii).

As noted in B9, an assignment need not comply with the signature requirements of § 1.4(d), as compliance is required only for the cover sheet submitting the assignment. Similarly, the actual request by an assignee to conduct prosecution must comply with the signature requirements of 37 CFR 1.4(d), but a supporting unrecorded copy of an assignment, pursuant to 37 CFR 3.73(b)(1)(i), need not comply with the signature requirements of § 1.4(d). Note that the assignee could, in the alternative, have recorded a signature non-compliant assignment (so long as the cover sheet was signature compliant) and made reference thereto pursuant to 37 CFR 3.73(b)(1)(ii).

In other words, an assignment document itself is not governed by the signature requirements of § 1.4(d)(2) because that would concern the validity of the assignment document, which the Office generally does not evaluate. Nevertheless, if the Director is not satisfied that ownership has been established (due to a suspect signature on the underlying assignment), then the purported assignee will not be permitted to control the prosecution. Thus, for example,. an electronic signature may be utilized on the assignment that does not comply with the requirements of 37 CFR 1.4(d)(2). Should, however, a handwritten signature on an attached assignment not appear to be in permanent dark ink or its equivalent, the lack of compliance with 37 CFR 1.4(d)(1) may cause the Office to question the authenticity of the document for purposes of establishing the right of a particular assignee to take the action requested.

Applicants are reminded that 37 CFR 1.4(d)(4) provides for specific certifications made upon the presentation of any paper or document to the Office.

No. Third parties do not having standing to demand that the Office issue or refuse to issue a certificate of correction. See Hallmark Card, Inc. v. Lehman, 959 F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C. 1997). The Office is, however, cognizant of the need for the public to have correct information about published patents and may therefore accept information about mistakes in patents from third parties and may issue certificates of correction based upon that information (whether or not it is accompanied by a specific request for issuance of a certificate of correction).

No. The title of the invention is not required (nor has it been under the previous version of §1.72) to be part of the specification. To the extent that practitioners feel an important identification purpose is served by supplying a title on the specification, it should appear as a heading on the first page of the specification. Alternatively, the title may now be supplied in an application data sheet (§ 1.76).

The three month period for requesting a refund under 37 CFR 1.28(a) starts on the date that a full fee has been paid. Payment by authorization to charge a deposit account is treated for refund purposes the same as payments by other means (e.g., check or credit card authorization), with each being treated as paid (for refund purposes) on the date of receipt in the Office as defined by 37 CFR 1.6. If a payment is mailed with a Certificate of Mailing under 37 CFR 1.8, the three month period for requesting a refund will start on the actual date of receipt in the Office, not the Certificate of Mailing date. If a payment is filed by Express Mail under 37 CFR 1.10, the date of deposit with the United States Postal Service (shown by the ‚"date-in‚" on the Express Mail mailing label or other official USPS notation) is the date of receipt of the payment and the three month period starts on this date.

If an applicant or a practitioner chooses not to print copies of U.S. patents and patent applications publications through the qyule最新电信一 Patents on the Web system or through the E-Patent Reference system, commercial sources that provide patents very quickly and inexpensively are available, and copies of U.S. patents and patent application publications are also available at the Patent and Trademark Depository Libraries (PTDLs). A listing of PTDLs is located on the qyule最新电信一 web site at http://juliemarsh.net/web/offices/ac/ido/ptdl/ptdlib_1.html . Additionally, the cost of patents if ordered from the qyule最新电信一 Office of Public Records is very reasonable ($3). For more information, see "qyule最新电信一 to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies," 1282 OG 109 (May 18, 2004).http://juliemarsh.net/web/offices/com/sol/og/2004/week20/pataces.htm .

Yes, such an amendment or affidavit filed after the filing of an RCE under 37 CFR 1.114 will not be entered as a matter of right unless a request for suspension of action under 37 CFR 1.103(c) and the required fee are filed with the RCE.

Amendments filed in response to a Quayle action are reviewed by technical support staff (TSS). If a reply to a Quayle action is a non-compliant amendment, a notice of non-compliant amendment should be mailed by TSS to the applicant notifying the applicant of the non-compliance. To avoid abandonment of the application, applicant must file an amendment in compliance with 37 CFR 1.121 within one-month or 30 days, whichever is longer, from the mailing of the notice. The time period is extendable under 37 CFR 1.136(a).

When a corrected amendment is filed in response to the notice, the corrected amendment is forwarded to the examiner to consider the amendment on the merits. The examiner may deny entry of the amendment if the amendment touches the merits of the application (e.g., adding more claims) since the prosecution is closed.

Applicant should delete the whole formula and add the new formula with the desired changes by using double brackets to delete the formula and underlining to add the new formula. For example: [[A + B = C]] A + B > C.

At the time of allowance, the examiner must indicate that the claims are being allowed in the index of claims and on the Notice of Allowability to avoid a printer query. In addition, examiners are encouraged to provide an explanation on the record either on the Notice of Allowability (e.g., under the section, "Other") or in the reasons for allowance to notify the applicant that the non-elected claims are rejoined and allowed.

Yes, the examiner has the discretion to enter any supplemental reply that is in compliance with 37 CFR 1.121, even if the reply adds more claims or includes an affidavit. For example, if the first reply includes an unsigned declaration and applicant subsequently files a signed declaration in a supplemental reply, the examiner should enter such supplemental reply if it is matched with the application before the examiner finishes the next action.

Yes, the corrected amendment filed in response to a notice of non-compliant amendment can include additional changes and it would not be considered as a supplemental reply.

A technical support staff person reviews supplemental amendments filed during a suspension period to determine whether the amendments are in compliance with 37 CFR 1.121. If such a supplemental reply is non-compliant, a notice of non-compliant amendment should be mailed to the applicant. It will provide applicant one-month or 30 days, whichever is longer, to file a corrected amendment. If applicant fails to file a timely corrected amendment in response to the notice, the application will be examined (after the period of suspension) without consideration of the supplemental reply.

No, such an amendment is not a supplemental amendment. Any amendment filed with an RCE under 37 CFR 1.114 will be entered because it is a submission under 37 CFR 1.114(c) to the RCE. The Office will enter any previously filed unentered after-final amendment and the amendment filed with the RCE in the order in which they were filed, unless the applicant provides instructions not to enter the after-final amendment. To avoid non-compliance under 37 CFR 1.121 and simplify the entry of the amendments, applicant may file an amendment that includes any desired changes in the unentered after final amendment, and instructions not to enter the after-final amendment, when filing the RCE.

No, in IFW, the entire amendment to the claims must be entered as a whole or denied entry.

Amendments to drawings filed after allowance are entered by the Office of Publications. If such amendment is forwarded to the examiner, the examiner should forward or return the application to the Office of Publications. The examiner should not deny entry of any drawing submission that includes only formal changes.

Examiner may either: (1) deny the entry of the supplemental amendment, or (2) enter the supplemental amendment and correct the non-compliance in an examiner's amendment if the supplemental amendment otherwise places the application in condition for allowance. If the examiner denies the entry of the supplemental amendment, the examiner should indicate that the supplemental reply is not being entered in the next Office communication using form paragraph 7.147.

Yes, the examiner may deny entry of the supplemental reply if the supplemental reply is filed on or after October 21, 2004, in a non-suspension period, and it not limited to one of the situations listed in 37 CFR 1.111(a)(2)(i).

No, the original numbering of the claims must be preserved throughout the prosecution in compliance with 37 CFR 1.126. Therefore, the claim listings presented in the preliminary amendment and any subsequent amendment must include the claims in the original specification with the status identifier (canceled), and the new set of (added) claims should start with the next higher claim number.

The Office will treat such amendment as a non-compliant amendment by sending applicant a notice of non-compliant amendment. Any preliminary amendment to the specification must be present on a separate sheet. See 37 CFR 1.121(h).

No, a preliminary amendment cannot be made in a transmittal letter or form for the filing of an application. The amendment to the specification that adds the specific reference to the parent application in the first sentence of the specification following the title must be provided on a separate sheet of paper in compliance with revised 37 CFR 1.121.

Applicant may wish to provide the specific reference in an application data sheet (ADS) under 37 CFR 1.76 or in a new specification instead of filing a copy of the specification of the parent application with a preliminary amendment.

The Office transmittal forms will no longer permit any preliminary amendment to be made in the transmittal form. If applicants are using a transmittal form that provides a box for a preliminary amendment, applicants are advised not to use such box, but to provide the preliminary amendment on a separate sheet of paper in compliance with revised 37 CFR 1.121.

Yes, the examiner may enter the non-compliant amendment and correct the non-compliance in an examiner's amendment. Since the correction is not substantive, the examiner may make the correction in an examiner's amendment without the applicant's authorization and/or after the statutory period for reply set forth in the last Office action.

Note: Examiner's amendments are at the discretion of the examiner and applicants should not expect examiner's to take corrective action if an amendment fails to comply with 37 CFR.

Yes, when the after-final amendment substantially places the application in condition for allowance, the examiner may request that the applicant authorize an examiner's amendment to correct the non-compliance along with any other substantive omissions/changes to place the application in condition for allowance if such authorization is provided within the six-month statutory period set forth in the final Office action, and any required extensions of time are authorized.

Only when the non-compliance is minor in the after-final amendment that would otherwise place the application in condition for allowance, the examiner may provide an examiner's amendment without an authorization from the applicant to correct the non-compliance if such examiner's amendment is limited to correcting the format errors or any typographical errors and does not make any substantive changes to the claims and/or specification. For example, if some of the status identifiers are improper or missing, the examiner may provide in the examiner's amendment a complete claim listing with the proper status identifiers or instructions to correct (e.g., for claim 2, change the status identifier "twice amended" to "previously presented").

Yes, a claim listing of every claim ever presented in the application is required, even for preliminary amendments present on the filing date of the application. The status identifier, (new), instead of (original), should be used for claims added by a preliminary amendment, even when the preliminary amendment is present on the filing date of the application and the first executed oath or declaration refers to the preliminary amendment. Only the claims presented in the original specification should be identified using the status identifier, (original). Claims that are canceled by a preliminary amendment present on the filing date of the application are required to be listed and identified using the status identifier, (canceled), in the preliminary amendment and any subsequent amendments.

No, applicant must not use the status identifier, (original), for claims added by a preliminary amendment, even if the preliminary amendment is present on the filing date of the application and it is filed on or after October 21, 2004, the effective date of the changes to 37 CFR 1.115. Any new claims added by an amendment, including a preliminary amendment, must have the status identifier, (new). If applicant files a subsequent amendment, applicant must use the status identifier "previously presented" if the claims added in the preliminary amendment are not being amended, or "currently amended" if the claims added in the preliminary amendment are being amended.

The examiner should not treat a non-compliant amendment on the merits unless the amendment would otherwise place the application in condition for allowance and the non-compliance is minor. For such situation, the examiner may correct the non-compliance using an examiner's amendment, and allow the application. If the amendment does not place the application in condition for allowance, the examiner should ask the technical support staff to send a Notice of Non-Compliant Amendment to the applicant to require a compliant amendment.

If the second non-compliant amendment again fails to comply with 37 CFR 1.121 for the same reason as cited in the Notice of Non-Compliant Amendment mailed by the Office, the technical support staff (TSS) should call the applicant to provide additional assistance and mail applicant a newly created form, "Failure to Acceptably Respond to Notice of Non-Compliant Amendment (37 CFR 1.121) No New Time Period for Reply is Provided."

If the second non-compliant amendment fails to comply with 37 CFR 1.121 for a different reason, the TSS should mail another "Notice of Non-Compliant Amendment (37 CFR 1.121)" identifying the new problem.

If the after-final amendment does not place the application in condition for allowance, the examiner should provide reasons for non-entry (e.g., the proposed amendment raises new issues that would require further consideration and/or search) in an advisory action. Furthermore, the examiner should also indicate in the advisory action the sections of the amendment that are non-compliant and the reasons why the amendment fails to comply with 37 CFR 1.121. The examiner may attach a Notice of Non-Compliant Amendment to the advisory action.

The time period continues to run from the mailing of the final Office action. No new time period is provided to correct the non-compliance. If time remains in the time period for reply set forth in the final Office action, applicants may resubmit the entire corrected after-final amendment within the time period set forth in the final Office action accompanied by the appropriate extension of time fee, if required.

Yes, the examiner may enter the after-final amendment and provide an examiner's amendment to correct the non-compliance.

The drawing submission should be entered, but the time period for applicant to file a reply to the non-final Office action continues to run. If the drawings are in compliance with § 1.121(d), acknowledgement of the drawing submission should be indicated in the examiner's next Office action.

When the applicant subsequently files a reply, the technical support staff (TSS) will review both the drawing submission and the reply to determine whether they are in compliance with 37 CFR 1.121. If the drawing submission or the reply is non-compliant, the TSS will mail a notice of non-compliant amendment notifying applicant of the non-compliance.

If a preliminary amendment, supplemental amendment filed a suspension period, or non-final amendment is non-compliant, the technical support staff should review the amendment in its entirety and point out all of the reasons for noncompliance in the Notice of Non-Compliant Amendment to notify the applicant of: (1) which section of the amendment paper is not in compliance with 37 CFR 1.121 (e.g., the amendments to the claims); (2) items that are required for compliance (e.g., a claim listing in compliance with 37 CFR 1.121(c)); and (3) the reasons why the section of the amendment fails to comply with 37 CFR 1.121 (e.g., the status identifiers are missing).

For a non-compliant amendment that is a reply to a non-final Office action, the Notice provides a time period of one month or thirty days, whichever is longer, for reply and this time period is extendable under 37 CFR 1.136(a) (e.g., up to five months after the one-month or thirty day time period). If applicant fails to file a reply to the Notice within the time period, the application will be abandoned.

Applicant must submit any amendments to drawings as replacement or new drawings accompanied by explanations of the changes in either the drawing amendment section or remarks section of the amendment paper. Any replacement sheets of drawings must be labeled as "Replacement Sheet" and any new sheets of drawings must be labeled as "New Sheet" in the header. The brief and detailed description of drawings should also be amended to be consistent with the changes to the drawings.

The proposed drawing correction practice has been eliminated. Manual of Patent Examining Procedure (MPEP), Sections 608.02(v) and 608.02(w) previously addressed proposed drawing correction practice, and were revised in revision 2 of the Eighth Edition to reflect the annotated marked up sheet practice. See also Changes To Implement Electronic Maintenance of Official Patent Application Records , 1272 OG 197 (July 29, 2003), 68 Fed. Reg. 38611 (June 30, 2003). (The background for this change was discussed in the Notice of Proposed Rulemaking: "For amending drawing figures (1.121(d)), applicants would be required to submit a replacement figure with the changes made. No pre-approval of proposed changes in red ink will be required. In each situation, an explanation of the changes must be supplied." Changes To Implement Electronic Maintenance of Official Patent Application Records ; Notice of proposed rule making 1269 OG 166 (April 22, 2003), 68 Fed. Reg . 14365 (March 25, 2003).)

If applicant wishes to make any changes to the drawings, the applicant must submit the replacement drawings that include the desired changes. In addition, applicant may submit, or may be required by the examiner to submit, a marked-up copy of any amended drawing figure, including annotations indicating the changes made.

If applicant clearly submitted proposed drawing corrections instead of replacement drawings, a notice of non-compliant amendment should be mailed to the applicant notifying the applicant that the label "Replacement Sheet" or "New Sheet" is missing, the practice of submitting proposed drawing corrections has been eliminated, and replacement or new drawing sheets that include the amended or new figures are required. If a replacement sheet of drawings was submitted, the proposed drawing corrections should have been labeled "Annotated Marked-up Drawings" and the notice of non-compliant amendment should require this label.

Yes, applicant may submit better quality drawings as replacement drawings so long as the requirements of 37 CFR 1.121(d) are met. Examiners should enter the replacement drawings even if submitted after allowance or after final because they do not include any substantive changes.

No, under the revised amendment practice, it would NOT be appropriate to indicate how many times a claim has been amended. Only the following seven status identifiers are permitted: "original", "currently amended", "canceled", "new", "withdrawn", "previously presented", and "not entered".

When applicants file a substitute specification, the following are required under 37 CFR 1.125: (1) a statement that the substitute specification includes no new matter; (2) a marked-up version of the specification with markings to show all the changes relative to the immediate prior version; and (3) a clean version of the substitute specification.

Yes, both versions should be scanned into IFW.

No, a letter to the Official Draftsman is not required. Instead, drawing amendments should be treated in the same paper as amendments to the specification, claims or abstract. See 37 CFR 1.121(d). If the drawing amendments are treated in a separate paper, no objection will be made merely because a separate paper has been used so long as the requirements of 37 CFR 1.121(d) are met.

Applicant can reinstate a canceled claim by presenting the text of the canceled claim with any desired changes in a new claim with a new claim number and use the status identifier, (new).

When applicant submitted a new claim (e.g., Claim 10 (new)) in an after-final amendment that was denied entry, applicant should use the status identifier (not entered) for the new claim (e.g., Claim 10 (not-entered)) in any subsequent amendment.

Applicants may use one of the following methods, for example, change "H4" to "H2" in a chemical formula:

(1) Strikethrough and underlining the whole formula.

Claim 1 (currently amended) A curing agent for epoxy resins comprising pyromellitic dianhydride, C6H4 (C2O3)2 C6H2 (C2O3)2 .

(2) Doublebrackets and underlining the whole formula.

Claim 1 (currently amended) A curing agent for epoxy resins comprising pyromellitic dianhydride, [[C6H4(C2O3)2]] C6H2 (C2O3)2 .

(3) Delete the claim and replace it with a new claim.

Claim 1 (canceled).
Claim 2 (new) A curing agent for epoxy resins comprising pyromellitic dianhydride, C6H2 (C2O3)2.

Do not use strikethrough or doublebrackets to delete only subscript "4" and use underlining to add only subscript "2" in the formula.

No, the status identifier must be presented after the claim number. See 37 CFR 1.121(c)

Any amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented.

No, applicant must use one of the permissible status identifiers. See question A1. If the claims that are indicated as allowable are not being amended in the current amendment, applicant may use either (original) or (previously presented), whichever is appropriate.

Yes, a notice of noncompliant amendment (37 CFR 1.121) should be mailed to applicant to require correction. If the amendment otherwise places the application in condition for allowance, however, the examiner should correct the status identifier using an examiner's amendment.

The Office will consider that it met the requirements of 35 USC 154(b)(1)(A)(i)-(iv) and implementing rules, 37 CFR 1.702(a)(1)-(4) when the Office mails the first rejection, objection, or other notice that is later reissued (e.g., remailed) because of the Japanese earthquake and/or tsunami. The Office will consider applicant to have failed to engage in reasonable efforts to conclude prosecution of the application under 37 CFR 1.704(b) if applicant does not respond within three months to any notice or any action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the mail date of the reissued action. The shortened statutory period continues to have no effect on the three-month period. See 37 CFR 1.704(b). In addition, the Office will continue to not consider the certificate of mailing or certificate of transmission date under 37 CFR 1.8 in calculating the patent term adjustment. See 37 CFR 1.703(f).

For example: Application is filed on August 1, 2009, and the Office mails a first non-final Office action on October 1, 2010. One of the inventors is in an area of Japan affected by the earthquake and/or tsunami on March 11, 2011. On March 24, 2011, applicant mails a copy of the form requesting that the Office action mailed on October 1, 2010, be reissued pursuant to the OG notice. The need for the reissuance of the Office action is due to the effects of the earthquake and/or tsunami. On March 27, 2011, the Office reissues (e.g., remails) the non-final Office action and restarts the three month period for reply.

The Office will consider that the non-final Office action mailed on October 1, 2010, will meet the requirement of 35 USC 154(b)(1)(A)(i) and 37 CFR 1.702(a)(1), and the Office will not grant any patent term adjustment as it relates to those provisions.

The Office will consider that applicant met the requirement of 37 CFR 1.704(b) if applicant files a reply within three months of March 27, 2011.

The seven permissible status identifiers set forth in 37 CFR 1.121(c) are: (Original), (Currently amended), (Canceled), (Previously presented), (New), (Not entered), and (Withdrawn). (Withdrawn-currently amended) is also acceptable.

The non-elected claims that are amended must have the status identifier (withdrawn) or (withdrawn-currently amended). The non-elected claims that are not amended must have the status identifier (withdrawn). Any new claims that are drawn to a non-elected invention must have the status identifier (new).

The claims in the claim listing of the latest amendment (e.g., the after-final amendment) will be used in printing the patent because the claims in the claim listing of the current amendment will replace all prior claim listings and versions of claims in the application. When allowing the application, the examiner should review all of the claims being allowed, including the claims that are not currently amended, to make sure that they comply with all Office requirements and will not produce quality issues or printer queries.

Yes. A request for reissuance of an Examiner's Answer must be made within two months of the mailing date of the Examiner's Answer and the Office must reissue (e.g., remail) the Examiner's Answer within the two month time period.

The time period for filing an appeal brief is based upon the date a notice of appeal is filed, and not on the date an Office action or other communication is mailed. An applicant may file a petition under 37 CFR 1.136(b) (accompanied by the $200.00 petition fee) if additional time to file an appeal brief is needed due to the effects of the earthquake and/or tsunami of March 11, 2011.

An applicant may file a request under 37 CFR 1.304(a) to extend the time for filing an appeal or commencing a civil action.

Yes. Of course, applicant must satisfy the requirements set forth in the OG notice. Applicants should keep in mind that if the Office action set a non-extendable time period of one month or thirty days, whichever is longer, applicant must request reissuance of the Office action and the Office must reissue the Office action prior to expiration of this one month (or thirty day) time period. Also, if the request for reissuance is granted, the time period running in the application would be one month or thirty days, whichever is longer, from the date of the reissuance (e.g., the remailing date) and it would not be extendable under 37 CFR 1.136(a).

No. If applicant submits a request for reissuance on the last day of the six-month statutory time period for reply to the Office action, the Office would not be able to reissue (e.g., remail) the Office action on that same day. Applicants must submit any request for reissuance of an Office action in sufficient time for the Office to withdraw and reissue the Office action prior to expiration of the statutory time period (as permitted to be extended under 37 CFR 1.136(a)). If the Office does not reissue the Office action prior to the expiration of the six-month statutory time period, the application would be abandoned by operation of law.

Applicant should wait until the Office responds to the after-final reply. If applicant is close to the expiration of the six-month statutory time period for reply, then applicant may request that the final Office action be reissued. If the final Office action is reissued, prosecution will remain closed. The previously filed reply will still be considered an after-final reply and will not be entered as a matter of right. The Office would simply be restarting the time period for applicant to take appropriate action in response to the final Office action.

Yes. If the final Office action is reissued, prosecution will remain closed and the previously filed reply will still be considered an after-final reply. The status of the after-final reply will remain as set forth in the Advisory Action. The Office would simply be restarting the time period for applicant to take appropriate action in response to the final Office action.

Yes.

Yes.

The time period that was set in the Office communication will be restarted from the date of the reissuance of that Office communication. For example, if an Office action was mailed that set a three-month shortened statutory period for reply, and the Office grants a request for reissuance of that Office action, the three-month time period running against the application will begin as of the date of the reissuance (e.g., the remailing date). This is different from some of the situations set forth in MPEP 710.06 in which applicant may not be given a new time period equivalent to the previous time period.

No. An applicant may simply submit the certification and request form (), or a copy of the OG notice, with an indication as to the relief being requested (if it is not clear from the record). Applicants do not have to provide any explanation regarding how or why they are entitled to the requested relief. Applicants should note, however, that any request for relief (either by submitting form or a copy of the notice) is considered a representation that the need for the requested relief is due to the effects of the earthquake and/or tsunami of March 11, 2011. Applicants are reminded that any paper being filed in the Office is considered a certification under 37 CFR 11.18(b). Therefore, applicants must ensure that they are entitled to the relief being requested. The need for the relief being requested must be due to the effects of the earthquake and/or tsunami of March 11, 2011, in Japan.

The Office does not plan to investigate whether a particular applicant qualifies for the requested relief beyond making sure that the request can be granted. Thus, for a request for reissuance of an Office communication, the Office will make sure that a reply or response to the Office communication was outstanding on March 11, 2011, and the time period (as permitted to be extended under 37 CFR 1.136(a)) has not yet expired. The Office does not plan to investigate whether the need for the requested relief was due to the effects of the earthquake and/or tsunami of March 11, 2011. If there is some evidence in the record that applicant may not be entitled to the requested relief, the Office does have the authority to require additional information. Applicants should also keep in mind that the request for relief is considered a certification under 37 CFR 11.18(b).

Example A:
An applicant based in Chicago, Illinois, directs US counsel to prepare, file and prosecute an application in the qyule最新电信一. The US counsel subsequently sends the application to foreign counsel for filing and prosecution in foreign jurisdictions. The US counsel directs foreign counsel to provide copies of all communications from the foreign office (by fax or overnight mail) within seven days of receipt thereof, and expressly reserves all decision-making authority as to prosecution of the US and foreign applications.

On January 5, 2002, a foreign counsel in Germany receives a communication from the European Patent Office that includes a list of citations of patents. On January 8, the foreign counsel, pursuant to the standing instructions of US counsel, sends by overnight mail, a copy of the communication from the EPO. The document is received by US counsel on January 12, 2002. On January 30, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 11, 2002.

Example B:
An applicant based in Paris, France, directs French counsel to prepare, file and prosecute an application in the European Patent Office. The EPO application is then sent to US counsel by French counsel to be reviewed, edited and prepared for filing in the qyule最新电信一. The US counsel works with the French counsel to review the edited application, and then files the US application. The review and editing of the US application also leads the French counsel to amend its EPO application.

On January 5, 2002, the French counsel receives a search report from the European Patent Office that includes a list of six patents. On January 20, 2002, the US counsel receives from French counsel (by overnight mail) a copy of the communication from the EPO and suggests that the US counsel review the search report and "take appropriate action." On January 25, 2002, the French counsel provides a copy of the search report to the applicant. On January 30, 2002, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 14, 2002.

Example C:
An applicant based in Chicago, Illinois, hires US counsel to prepare an application suitable for filing in the United States and the European Patent Office. The US counsel engages a German attorney to assist in the review and editing of the application to take account of issues relevant to EPO practice. The US counsel then reviews the edited application, approves the changes, and files it in the United States. The US counsel then directs the German attorney to file the application in the EPO. During prosecution of the US case, the US counsel receives an office action citing three patents.

On December 1, 2001, the US counsel sends the three patents to the German attorney for review and appropriate action. On January 5, 2002, the German attorney receives a search report from the EPO that cites the three previously cited patents, plus a fourth patent, designating all as "X" references. On January 15, the German attorney reviews the fourth patent and compares it to the three patents cited in the US prosecution. The German attorney concludes that the fourth patent is duplicative of one of the three patents, and takes no further action.

On March 1, 2002, during a routine status inquiry, the US counsel is informed of the citation of the fourth patent by the EPO and the decision of the German attorney that the information in the newly cited patent was duplicative of the three patents previously cited by the qyule最新电信一. The US counsel also obtains copies of the newly cited patent on this date. On March 5, 2002, the US counsel files an IDS containing the newly cited patent.

Introduction

37 CFR 1.704(d) provides that a paper containing only an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10) if it is accompanied by a statement that each item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart application and that this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement.

The determination of when the thirty day period begins to run is dependent on the role of each entity involved in the prosecution of the US and foreign applications, and the role that each plays (if any) vis- -vis the US application. The inventors, the assignee and the US patent counsel are all individuals designated in 37 CFR 1.56(c). The issue is whether the foreign patent counsel is also an individual designated in 37 CFR 1.56(c).

37 CFR 1.56(c) provides that individuals associated with the filing or prosecution of a patent application within the meaning of 37 CFR 1.56 are:

Each inventor named in the application;
Each attorney or agent who prepares or prosecutes the application; and
Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.

Based on these elements of 37 CFR 1.56(c), the following would be the conclusions of the Office in the three examples cited above.

Answer to Example A:

The thirty-day period would be calculated from January 12, 2002 . As such, the IDS filed on February 11th would be filed within the thirty-day window in 37 CFR 1.704(d), and thus would not result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

In this example, the foreign counsel has no substantive role in the prosecution of the US application. The explicitly defined role of the foreign counsel relative to the US counsel in combination with the practice in the described fact pattern removes any potential doubt as to the role of the foreign counsel.

Answer to Example B:

The thirty-day period would be calculated from January 5, 2002 . As such, the submission of the IDS would not be received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

In this example, the qyule最新电信一 would consider the French counsel to have been a party within the meaning of 37 CFR 1.56(c). The French counsel, based on the above facts, played a material role in the preparation and prosecution of the US application (e.g., counsel drafted the original application, worked with US counsel to amend the application and subsequently amended the EPO application based on the work product produced with US counsel). In addition to the French counsel, the applicant would in any case be a party within the meaning of 37 CFR 1.56(c).

Answer to Example C:

The thirty-day period would be calculated from January 5, 2002 . As such, the submission of the IDS would be determined to have not been received, received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

In this example, the qyule最新电信一 would consider the participation of the German counsel in the prosecution and decision-making as to the relevance of the newly cited art vis- -vis the previously cited three patents to be a material participation in the US prosecution. As such, the German counsel would be considered by the qyule最新电信一 to be a party covered by 37 CFR 1.56(c), and as such, would evaluate compliance with 37 CFR 1.704(d) from the date that the foreign counsel first learned of the fourth patent (i.e., the newly cited reference).

Inquiries related to PTA may be directed to the Office of Patent Legal Administration at (571) 272-7702.

The Office did not specify in the notice which areas of Japan are affected since the Office did not want to exclude someone who may have been affected by the earthquake and/or tsunami. However, the need for the relief being requested must be due to the effects of the earthquake and/or tsunami of March 11, 2011. Whether someone in Tokyo would qualify for relief would depend on whether the need for the relief was due to the earthquake and/or tsunami.

No, applicant does not need to pay any extension of time fees when filing a request for reissuance of an Office communication.

The international application must have an international filing date of May 29, 2000 or later. The date on which the international application either complies with 35 USC 371(c) or enters the National Stage is not relevant for determining eligibility for PTA. See section 4405(a) of the AIPA, 35 USC § 363, and 37 CFR § 1.702(f).

Yes, the filing date of the continuing application controls, thus, if the continuing application is filed on or after May 29, 2000, the continuing application is eligible for PTA. See section 4405(a) of the AIPA, 35 USC §§ 111(a) and 120, and 37 CFR § 1.702(f).

Yes (regardless of whether "formal," corrected, or replacement drawings are required by the notice of allowance). 37 CFR 1.85 no longer permits applicants to request that a requirement for correction of drawings be held in abeyance until a notice of allowance is mailed. The Office encourages that drawings appropriate for publication be submitted early in the prosecution of the patent application so that any patent application publication will be published, and the application will be examined, with the best quality drawings. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final rule, 65 Fed. Reg. 57023, 57032, 57055 (Sept. 20, 2000). Applicants must file any "formal," corrected, or replacement drawings prior to the mailing of a notice of allowance to avoid a reduction of any patent term adjustment.

The绝伦推理电视剧推荐does not print the expiration date on issued patents because the actual date a patent will expire is dependent upon a number of future events. The actual date any particular patent will expire is, for example, dependent upon whether: (1) all maintenance fees are timely paid; (2) the patent is disclaimed, either by a statutory disclaimer of all claims or a terminal disclaimer; (3) all of the claims of the patent are canceled during a reexamination proceeding; or (4) an extension under 35 U.S.C. 156 is granted. Since less than forty percent of patentees pay all three maintenance fees, an expiration date based upon a calculation of date that is twenty years from the earliest filing date under 35 U.S.C. 111(a), 120, 121, 363, or 365(c) plus any calculated extension under 35 U.S.C. 154(b) would be incorrect and misleading over sixty percent of the time. However, the front page of the patent will indicate the number of days of term adjustment to which the patent is entitled.

Yes, assuming the application is eligible, patent term adjustment is available under either 35 USC 154(b)(1)(A) (administrative delays) or (C) (interferences, secrecy orders and successful appeals) regardless of how long the application was pending in the Office. See 37 CFR 1.702(a), (c), (d), and (e).

Example: An application is filed 6/1/00. A notice of allowance is mailed 9/1/01. The issue fee is paid and all formal requirements are satisfied on 12/1/01. The patent is not issued until 5/1/02. As the patent was not issued in four months following the payment of the issue fee, the period of delay from 4/2/02 to 5/1/02 would give rise to patent term adjustment pursuant 35 USC 154(b)(1)(A)(iv) and 37 CFR 1.702(a)(4) and 1.703(a)(6).

Both fees. Even an application for term adjustment that is only requesting reinstatement of part of a period of adjustment by showing, in spite of all due care, that the applicant was unable to respond to any rejection, objection, argument or any other request made by the Office within a three-month period starting the date of mailing of the Office action or requirement, is required to pay the fee for an application for term adjustment set forth in 1.18(e) as well as the fee for a due care showing set forth in 1.18(f). In other words, an application under 37 CFR 1.705(c) is also required to comply with 37 CFR 1.705(b).

If the application was filed before May 29, 2000, you may file a continuation under 37 CFR 1.53(b) or (d). If a continuation under 37 CFR 1.53(d) (a CPA) is to be filed, remember that the application as originally filed is used to create the patent application publication, so any amendments will not be reflected in the publication. As a result, applicants are encouraged to file a continuation under 37 CFR 1.53(b) instead of under 37 CFR 1.53(d). If the application was filed after May 29, 2000, only a continuation under 37 CFR 1.53(b) may be filed.

Yes. Any nonprovisonal application (other than for a design patent) filed on or after November 29, 2000 is subject to the eighteen-month publication provisions of the AIPA. This includes continuation, divisional, and continuation-in-part applications of applications filed prior to November 29, 2000. It does not matter whether the continuing application was filed under 37 CFR 1.53(b), or as a CPA under 37 CFR 1.53(d). Since a request for a continued examination (RCE) under 37 CFR 1.114 is not a continuing application, filing a RCE of an application filed prior to November 29, 2000 will not make that application subject to the eighteen-month publication provisions of the AIPA.

No, they are published with a notice in the Official Gazette - Patents, stating that the application has been filed. Reissue applications are open to public inspection. See 37 CFR 1.11(b). If you receive a filing receipt for a reissue application and the filing receipt has a projected publication date, contact the Customer Service Representative where your application is assigned. They can have the application withdrawn from publication under 35 U.S.C. 122(b).

For a voluntary publication, early publication, or republication the applicant must pay the publication fee at the time applicant requests such publication (i.e., at the time of filing the EFS submission). For publication of an application filed on or after November 29, 2000, a notification of the publication fee due will be provided in the Notice of Allowance and Fee(s) Due. If the publication (or issue) fee is not timely paid, the application will be abandoned for failure to reply to the Notice of Allowance.

Yes, notice of foreign filing is still required. Rescission does not nullify a nonpublication request. Rescission revokes the nonpublication request, but it does not erase the fact that the nonpublication request was made because a nonpublication request is more than a request that the application not be published, it is also an affirmative statement that the "invention disclosed in the application has not been and will not be the subject of an application in another country." If notice of foreign filing wasn't important even when the nonpublication request had been rescinded, then Congress would not have included both sections (ii) and (iii) in the statute (rescission and notice of foreign filing, respectively).

35 U.S.C. 122(b)(2)(B) states (in part):

(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).

Furthermore, if 35 U.S.C. 122(b)(2)(B)(iii) clearly excluded applications in which a rescission had been made from the those applications in which notice of foreign filing was required, then such applications would not be required to have a notice of foreign filing. The request for nonpublication, however, is more than simply requesting nonpublication, it is an affirmative statement that the application has not been and will not be filed abroad. Therefore, one cannot simply rescind the nonpublication request and have the record be clear as to whether applicant has or will file in another country or under an international treaty ( e.g. , PCT) that requires publication. Since the statute does NOT exclude applications with rescissions from those applications in which a notice of foreign filing is required, all applications in which applicant has informed the Office that they will not "foreign file" via a nonpublication request require a notice from the applicant that, in effect, they changed their mind by providing an affirmative notice of foreign filing. See 35 U.S.C. 122(b)(2)(B)(iii).

An applicant or patentee who merely rescinded their nonpublication request, and did not tell the Office that they foreign filed (and has foreign filed and did not provide notice before the date that is 45 days after the date of foreign filing) should promptly file a petition to revive or consider the application abandoned.

A request for voluntary publication must be filed via the Electronic Filing System (EFS) in compliance with 37 CFR 1.221. If the applicant submits a request that does not meet the EFS requirements , the request will be dismissed. Any processing fee paid (including those authorized to be charged, e.g., to a deposit account) will be retained. If applicant meets the EFS requirements, but does not include the publication and processing fees as set forth in 37 CFR § 1.18(d) (currently $300) and 1.17(i) (currently $130), respectively, the Office will send the applicant a letter requiring the fees. The publication of the application will be delayed.

Alternatively, if the application was filed before 5/29/00 (and no prior CPA was filed on or after 5/29/00), the application may become eligible for publication, if the applicant files a CPA. The contents of originally filed prior application will be published. The disadvantage to filing a CPA rather than an EFS submission is that any amendments will not be published with the application. A CPA may not be filed in an application filed after May 29, 2000.

For more information on voluntary publication, see Helpful Hints Regarding Publication of Patent Applications , 1249 OG 83(August 21, 2001) (available on the Internet at http://juliemarsh.net/web/offices/dcom/olia/aipa/helpfulhints.htm ).

The request is improper, and will not be accepted. The Office will refund the publication fee, but not the processing fee. Should applicant still desire voluntary publication, a new request accompanied by both the publication fee and a second processing fee should be submitted. For more information on the EFS requirements, you may contact the Office's Electronic Business Center at http://juliemarsh.net/ebc/index.html or 800-786-9199 or 703-308-4357.

Yes, it is created by the use of the Electronic Filing System , which is the only means to request voluntary publication of an application. See 37 CFR 1.221(a).

Yes. Applicants have one year from the publication date of a published application to present the same or substantially the same claim as a claim in a published application. When the claim is, however, presented later than one year after the publication date, a rejection under 35 USC 135(b)(2) is proper. Thus, a rejection under § 135(b)(2) should be made when:

  • The effective filing date of the claim in an application being examined is later than the publication date of the published application;
  • The application being examined is claiming the same invention as claimed in the application publication, i.e., the claim in the application being examined is the same as, or for the same or substantially the same subject matter as, the published claim in the application publication; and
  • The presentation of the claim in the application being examined is later than one year after the publication date of the published application

Note:

  • A rejection under 35 USC 102(a) and 102(e) should also be made, since the effective filing date of the claim in the application being examined is later than the publication date of the published application.
  • The published application could be a U.S. patent application or an international application designating the United States

The filing of an RCE on or after 11/29/00 has no impact on publication of the application. The application will be published or not published based on the application filing date. If the application is filed before 11/29/00 (and no CPA has been filed on or after 11/29/00), the application will not be published. If the application (including a CPA) has been filed on or after 11/29/00, the application will be published. A filing of an improper CPA that has been treated as an RCE also has no impact on publication of the application.

No, the filing of the RCE does not cause the application to be subject to publication. The applicant should not receive a filing receipt with a projected publication date or a Notice of Publication Fee Due. If applicant receives a filing receipt indicating that the application is projected to be published, applicant should fax the transmittal letter for the RCE and a post card receipt for the RCE to PGPub Division at (703) 305-8568 with an explanation that the application was filed before November 29, 2000 and should not be scheduled for publication. A follow-up phone call should be made to one of the contacts listed in the CAB1 Q&A such as Tammy Koontz at 703-605-4283, Marcia Campbell at 703-305-4322, or Jon Lachel at 703-605-4285. The transmittal letter serves as proof that an RCE not a CPA was filed. If the applicant notifies the Office more than 4 weeks prior to the projected publication date, the application may be removed from publication process, but a later request will not remove the application from publication.

The applicant should reply to the Notice of Publication Fee Due with the following statement.

"I request that this notice be vacated as being in error. The application is not subject to publication as the application was not filed on or after November 29, 2000."

A request to rescind a previously filed nonpublication request may be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

Mail Stop PGPUB
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.

Yes, provided that the application is pending on November 29, 2000 and your request complies with 37 CFR 1.211. The right to reasonable royalties is subject to a number of conditions: e.g., (1) actual notice of the published application must be given; and (2) the patent claims must be substantially identical to the claims in the published application.

For Pre-Grant Publication questions, please contact the PGPub hotline at (703) 605-4283 or [email protected]. The Office of Patent Publication has a help desk that can be reached at (703)305-8283. The Customer Service Representatives in each Technology Center will be able to help you with respect to nonpublication requests and other matters regarding specific applications.

If the application filed in the qyule最新电信一 includes description that is more extensive than any previously filed foreign applications, applicant may submit a redacted copy of the US application for publication, eliminating the description of the invention that is not also contained in any of the foreign corresponding applications. The applicant must file the redacted copy of the application using EFS in compliance with 37 CFR 1.217. If the redacted copy of the application does not meet the EFS requirements, the qyule最新电信一 will publish the application as unredacted. The redacted copy of an application must be submitted within 16 months after the earliest filing date for which a benefit is sought under title 35, USC.

37 CFR 1.217 requires that a number of items be submitted for a redacted publication, but labeling the redacted sections in the EFS version as redacted is not required.

No, provisional applications are not eligible for publication.

In the American Inventors Protection Act of 1999 (AIPA) Subtitle E - Domestic Publication of Patent Applications Published Abroad, Section 4504 on Provisional Rights addresses this very issue. By the terms of the AIPA, an eventual patentee will be able to obtain a reasonable royalty from any person, having actual notice, who "infringes" the claimed invention during the period beginning on the date of publication of the application and ending on the date the patent is issued. The right to recover a reasonable royalty is based upon actual notice and is only available if the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

No, because the qyule最新电信一 is not charged with administering provisional rights.

Yes, a petition under 37 CFR 1.55(e) including a corrected application data sheet in compliance with 37 CFR 1.76(c) and the petition fee set forth in 37 CFR 1.17(m) would be required because the filing date was incorrect. A foreign priority claim pursuant to 37 CFR 1.55 requires identification of the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), and day, month, and year of its filing.

Yes, a petition under 37 CFR 1.55(e) including a corrected application data sheet in compliance with 37 CFR 1.76(c) and the petition fee set forth in 37 CFR 1.17(m) would be required because the application number was incorrect. A foreign priority claim pursuant to 37 CFR 1.55 requires identification of the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), and day, month, and year of its filing.

No, applicant must file either a reissue application or a request for certificate of correction with an amendment adding the specific reference of the prior-filed application to the first sentence of the specification and a petition under 37 CFR 1.78(a)(3) to correct the patent. See MPEP 1401-1460 for more information on reissue applications and MPEP 1481 for more information on requests for certificate of correction.

No, the petition under 37 CFR 1.78(a)(3) and the surcharge would not be required when applicant is changing the relationship in a benefit claim from "continuation" (or "divisional") to "continuation-in-part" or from "continuation-in-part" to "continuation" (or "divisional"), or from "continuation" to "divisional," because the Office was able to schedule the application for publication with the relationship given.

Yes, if a benefit claim is submitted without the specific relationship between the nonprovisional applications, and the specific relationship between the nonprovisional applications is subsequently submitted after the expiration of the period, a petition and the surcharge would be required because the Office cannot enter the benefit claim without the relationship between the applications. See Claiming the Benefit of a Prior-Filed Application under 35 U.S.C. 119(e), 120, 121, and 365(c), 1268 Off. Gaz. Patent Office 89 (March 18, 2003).

Yes, a petition and the surcharge would be required to correctly identify the prior application number because a benefit claim pursuant to 37 CFR 1.78(a)(2) requires identification of the application number and the Office enters the prior application's application number to schedule the application for publication.

When a § 111(a) continuation of an International Application is filed on or after November 29, 2000, the first line of the specification must be amended, or an
application date sheet must be submitted, within the time period set in amended 37 CFR 1.78(a)(2) to contain a reference to the relationship of the §
111(a) continuation to the prior international application. For example, the language --This application is a continuation of YY/123,456, which was a national stage filing under 35 U.S.C. 371 of PCT/XX99/01234 filed June 1, 1999.--

You will need to file: (1) a petition under 37 CFR 1.182 requesting entry of an amendment into an abandoned application; (2) the petition fee set forth in 37 CFR 1.17(h); and (3) an amendment to add the reference of the earlier application to the first sentence of the specification. 35 U.S.C. 120 permits the entry of a subsequent amendment in an abandoned application to include the benefit of an earlier filing date for purposes other than prosecution. See Sampson v. Commissioner , 195 USPQ 136 (D.D.C. 1976). Please note that a petition to accept an unintentionally delayed claim under 37 CFR 1.78(a)(3) and the surcharge under 37 CFR 1.17(t) are not required in the CPA since the rule specifically provides for an exception for continued prosecution applications.

A petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) would not be required if the application for the original patent was one of the categories of applications set forth in 37 CFR 1.78(a)(2)(ii)(A)-(C) (i.e., an application for a design patent; an application filed under 35 U.S.C. 111(a) before November 29, 2000; or a nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000).

Example 1: A petition and the surcharge set forth in 37 CFR 1.17(t) would not be required if the original application was a utility application filed under 35 U.S.C. 111(a) before November 29, 2000, even if the reissue application was filed on or after November 29, 2000 and the benefit claim was not made within four months of the filing date of the reissue application.

Example 2: A petition and the surcharge set forth in 37 CFR 1.17(t), however, would be required if the original application was a utility application filed under 35 U.S.C. 111(a) on or after November 29, 2000 without a benefit claim being made in the original application, even if the benefit claim was filed upon the filing of the reissue application.

If a benefit claim is accepted and the petition under 37 CFR 1.78(a)(3) is granted in the reissue application, a further petition under 37 CFR 1.78(a)(3) and the surcharge for adding the benefit claim to the patent would not be required in any subsequent application for reissue of the patent. In order to provide a complete record, applicant must file an amendment to add the benefit claim and a copy of the petition and the decision granting the petition, in the subsequent reissue application.

Yes, a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) would be required if the later-filed reissue application is a utility or plant application filed on or after November 29, 2000, even if the later-filed reissue application is for correcting a patent that issued from an application filed before November 29, 2000. This is because the benefit claim is between the later-filed reissue application and the prior-filed reissue application and the benefit claim of the prior-filed reissue application is not being added to correct a benefit claim in the patent.

Go to http://juliemarsh.net/web/offices/dcom/olia/aipa/ . Click on Rules, Patent. Alternatively, go to [PDF] for Changes To Implement Eighteen-Month Publication of Patent Applications; Final Rule, 65 FR 57024 (September 20, 2000).

Go to http://juliemarsh.net/web/offices/dcom/olia/aipa/forms.htm for the following forms.

  • Complaint Form Regarding Invention Promoter (PTO/2048)
  • Credit Card Payment Form (PTO/2038)
  • Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i) (PTO/SB/35)
  • Request for Continued Examination (RCE) Transmittal(PTO/SB/30)
  • Request for Deferral of Examination Under 37 CFR § 1.103(d) (PTO/SB/37)
  • Request to Rescind Previous Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(ii)(PTO/SB/36)

Go to http://juliemarsh.net/web/forms/index.xml for these and other qyule最新电信一 forms. Go to http://juliemarsh.net/web/forms/qas.html for frequently asked questions about qyule最新电信一 forms.

Neither the relationship of a National Stage application to the International Application, nor the language of publication by the International Bureau should be set forth in the first line of the specification of the National Stage application. An International Application is not a prior application as to the National Stage (they are legally the same application), therefore amended 37 CFR 1.78(a)(2) does not apply.

PAIR should only be used to conform the Office's electronic records with the patent application file. For example, if the originally-submitted oath or declaration was signed by three inventors, but the filing receipt lists two, a request can be made through PAIR to add the inventor. If the originally filed executed declaration named an inventor who should not have been named as an inventor, or did not include someone who should have been included as an inventor, then applicant must file the appropriate papers under 37 CFR 1.48. Similarly, to change the order of the inventors from that shown on the oath or declaration, a petition under 37 CFR 1.182 is required and PAIR is not the appropriate mechanism.

Yes. Although applicants may request publication of the name of the assignee of an application (if the assignment has already been recorded or is being submitted for recordation) on the patent application publication by the use of the PAIR system, this does not replace recordation of the assignment documents. The assignment documents should continue to be forwarded with the cover sheet and fee to the Assignment Division. A corrected filing receipt will be mailed to applicant once the request for entry of the assignment has been processed by the Electronic Business Center.

If the error is a contents entry other than the filing date of an application, including a Continued Prosecution Application (CPA), contact the Customer Service Representative (Representative) for the Technology Center (TC) where your application is assigned. If you are alleging that the date shown in PAIR is an incorrect date, then the Representative may need documentary evidence (e.g., an Express Mail label or a post card receipt) showing that the paper was received on a certain date. Note that the certificate of mailing date (which may be relied upon for timely filing purposes) is not retained in the qyule最新电信一 PALM records, and that the date a paper is considered received in the Office is the date that the qyule最新电信一 actually received the papers, unless the paper was filed using Express Mail under 37 CFR 1.10. The Representative will obtain the application file wrapper and determine whether there is an error in the qyule最新电信一's records. If there is a date error, the records will be corrected. If the error is in the filing date of an application, including a CPA, a filing date petition is required. Contact the Office of Petitions by telephone at (703)305-9285 or by fax at (703)308-6916 for further information.

The statute requires all applications to be published, not just applications that do not claim the benefit of any other application and authorizes the qyule最新电信一 to recover the publication fee when the continuation application is allowed. You must pay the publication fee when the continuation application is allowed because the continuation application has been or will be published, and because a non-publication request was not made on filing in an application that is subject to publication under 35 U.S.C. 122(b).

In this situation, you will need to file a petition to revive an abandoned application for failure to timely pay the publication fee under 37 CFR 1.137(b). See MPEP 711.03(c), pages 700-140 and 700-141 (August 2001). You may use the form [PDF] available on the qyule最新电信一 web site at [PDF] . The petition must accompanied by: (1) the petition fee as set forth in 37 CFR 1.17(m); (2) the publication fee; a complete reply to the notice (i.e., the issue fee, corrected drawing, etc.); and (3) a statement that the entire delay in filing the reply and/or fee(s) from the due date until the filing of a grantable petition was unintentional. In addition, if a complete reply to the Notice of Allowance was not filed (e.g., if the issue fee was also not paid, and any drawings, declaration, or biological deposit was not filed), then a complete reply to the Notice of Allowance must also be filed. The petition and an authorization to charge the fees to a deposit account or credit card may be faxed to the Office of Petitions (703) 308-6916.

The bibliographic review button is only available for applications assigned a projected publication date.

Applicant will be mailed a notice with the publication number and publication date. This notice is now being mailed on the publication date.

Yes, a "Notice of New or Revised Publication Date" is mailed if the publication date changes by more than six weeks due to processing delays, a secrecy order being removed, or subsequent to the revival of an abandoned application. If the publication date is changed, or the application is not to be published because the application is abandoned and the abandonment is recognized more than nine weeks before the projected publication date, then the Notice of Abandonment will serve as the communication that the application will not be published. If applicant adds or deletes a priority claim so that the 18-month publication date is changed, applicant will be mailed a corrected filing receipt, informing applicant of the newly assigned publication date.

Yes. You must pay the publication fee within the time period set forth in the Notice, and may request a refund if the application is not published.

The refund request should be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

Mail Stop PGPUB
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.

No, the mere filing of the PCT application precludes the proper use of a non-publication request, since the invention disclosed in the US application was the subject of an application that was filed under an international agreement requiring publication at 18 months (the PCT). 35 USC 122(b)(2)(B)(i) states that "If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, . . ." The trigger in the statute is not the publication, but rather the trigger is the act of filing in a foreign country that requires publication, or under international agreement that requires publication. Thus 37 CFR 1.213(a)(3) is consistent with the statutory requirement. The statute simply does not allow for abandonment of the foreign application, or application under a multilateral international agreement, prior to foreign publication at 18-months in order to provide for an appropriate request for non-publication in the US application.

A request for non-publication will not be recognized unless it is conspicuous. See 37 CFR 1.213(a)(2). Providing text as one paragraph among numerous other paragraphs with no highlighting of the request for non-publication is not conspicuous, and thus the Office's assignment of a publication date was appropriate. To avoid publication you may expressly abandon the application, and file a new application under 37 CFR 1.53(b), claiming priority to the earlier-filed application, with a "Nonpublication Request under 35 U.S.C. 122(b)(2)(B)(i)" (posted at [PDF] ) or make the request and certification in a similarly conspicuous manner when filing the patent application. If your application has been assigned a publication date within the next one to six months, you should consider filing a petition for express abandonment under 37 CFR 1.138(c). If your application has been assigned a publication date within the next four weeks, then it is too late to avoid publication of the application. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final Rule, 65 Fed. Reg. 57024, 57034, Sep. 20, 2000, 1239 Off. Gaz. Pat. Office 63, 73 (October 10, 2000) . Applicant would have a similar remedy in other situations where the request is not conspicuous, for example, where the request is in the specification of the application, on a fee transmittal sheet, or buried in the transmittal letter.

1. Do I need to rescind the nonpublication request?
2. Is the U.S. application abandoned because the certification is improper?
3. Do I need to file a petition to revive the abandon application due to failure to notify the Office of the PCT application under 37 CFR 1.137(f)?
4. Is there anything I can do to correct the improper certification so that the validity or enforceability of any patent issuing from the U.S. application is not jeopardized?

1. Yes. The request to rescind (qyule最新电信一 form PTO/SB/36) should be filed promptly. Since the PCT application was filed prior to the filing of the U.S. application, the applicant or the representative should not have certified that the invention disclosed in the U.S. application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication. See 35 U.S.C. 122(b)(2)(B)(i). The U.S. application is subject to publication under the eighteen-month publication provisions of AIPA.


2. The Office will not treat the U.S. application as abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii). The statute only provides for that an application is regarded as abandoned when the applicant fails to notify the Office within 45 days of a subsequently filed application that is directed to the same subject as the invention of the US application in another country, or under a multilateral international agreement, that requires eighteen-month publication. 35 U.S.C. 122(b)(2)(B)(iii) does not apply to the situation when the applicant made an improper certification subsequent to the foreign filing


3. A petition to revive under 37 CFR 1.137(f) is inappropriate because the application is pending (unless the application is abandoned for other reasons). If a petition to revive under 37 CFR 1.137(f) is filed, the Office will dismiss the petition as inappropriate but retain the petition fee because the Office was required to evaluate the merits of the petition before being able to determine that the petition was not appropriate.


4. Applicants and their representatives should make sure that the certification is proper before signing and filing it with the Office. While applicants should rescind any improper certification as soon as possible, 35 U.S.C. 122(b)(2)(B)(i)-(iv) does not include any provision for "correction" of an improper certification. Any applicants or their representative, however, who makes a false statement (e.g., an improper certification) may be violating 37 CFR 10.18(b). In addition, such false statements by registered patent practitioners may also violate other Disciplinary Rules, 37 CFR 10.20-10.112. While applicant cannot undo the fact that an improper certification was made in this application, with the filing of the rescission request applicant may explain that the original certification was improper.

Yes, since the entry of a third party submission does not mean that the information contained in the submission be considered by the examiner, an individual who has a duty to disclose under 37 CFR 1.56, including the applicant, should submit such information in an IDS in compliance with 37 CFR 1.97 and 1.98 to ensure that any material information is properly considered by the examiner.

The new form PTO/SB/35 "Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)" is available at: [PDF]

For more information on nonpublication request, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://juliemarsh.net/web/offices/dcom/olia/aipa/helpfulhints.htm ).

The Office does not have any current plans to routinely monitor compliance with either the certification or notice requirements of 35 USC 122(b)(2). Applicants are advised that the Office's failure to note that an application has gone abandoned as a matter of law for failing to provide the proper notice has no effect on the abandoned status of the application (will not operate to prevent the abandonment of the application), regardless of any indication of allowability from the Office.

The Office does not have any current plans to routinely provide notice to applicant that their patent applications have been "regarded as abandoned." Should the examiner become aware of the foreign filing, e.g., during the prior art search, the examiner does have the authority to formally hold the application abandoned.

If you do not think that you should have received a projected publication date because you filed a request for continued examination (RCE) or because the filing date of the application is before November 29, 2000, contact the Technology Center where your application is assigned and ask for the Customer Service Representative. The Representative can have the problem corrected.

Yes, please see the Pre-Grant Publication Global Concept of Operations document, posted on the AIPA web page, under the heading "Presentations."

For more information on publication of patent applications, see Helpful Hints Regarding Publication of Patent Applications , 1249 OG 83 (August 21, 2001) (available on the Internet at http://juliemarsh.net/web/offices/dcom/olia/aipa/helpfulhints.htm ).

Section 1.99 provides that a submission by a member of the public of patents or publications relevant to a pending published application will be entered in the application file if the submission complies with the requirements of § 1.99 and the application is still pending when the submission and application file are brought before the examiner. Section 1.99(d) provides that a submission under § 1.99 may not include any explanation of the references, or any other information. The Office will dispose of any explanation or information if included in a submission under § 1.99. To ensure that there is no protest, the Office will review submissions under § 1.99 to determine whether they are limited to patents and publications before the submission is placed in the file of the application and forwarded to the examiner. The submission under § 1.99 will not be placed in the file of the application, if the explanation of the references and any other information included in the submission are integrated in the references and cannot be extracted easily, or if the references are highlighted.

Mail Stop PGPUB, Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450.

The applicant will have one month from the mailing date of the new filing receipt to file the amended application via EFS. See Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 OG 97 (December 26, 2000).

A petition to abandon an application to avoid publication under 37 CFR 1.138(c) and the fee (currently $130) set forth in 37 CFR 1.17(h) may be filed if there is sufficient time (i.e., more than 4 weeks) to permit the appropriate officials to recognize the abandonment and remove the application from the publication process, i.e., the petition must be received by the Office of Patent Publication no later than four weeks before the projected publication date. The petition will not be granted unless the petition and the fee are received more than four weeks prior to the projected date of publication (found on the filing receipt). The petition and the fee (or an authorization to charge the fee to a deposit account) should be mailed to Mail Stop Express Abandonment Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450, or faxed to the Office of Patent Publication, PGPub Division, at (703) 305-8568.

The Office began to mail filing receipts for CPAs beginning in February of 2001. The filing receipts that were first mailed did not explain that they were for the CPA and created considerable confusion. The Office has revised the receipt so that for CPAs, the filing receipt now states "Receipt is acknowledged for a CPA in this nonprovisional Patent Application" and also has a field for the date the CPA was filed between the field for the date the foreign filing license was granted and the Projected Publication Date. Because the application is identified by the application number and filing date accorded when the application was originally filed, the application number and filing date in the header will continue to indicate a filing date earlier than the filing date of the CPA.

Any request for an early publication must be accompanied by the publication fee set forth in 37 CFR 1.18(d) (currently $300). The applicant must submit a copy of the application in compliance with the Electronic Filing System (EFS) requirements in 37 CFR 1.215(c) or the qyule最新电信一 will publish the application as provided in 37 CFR 1.215(a). If the EFS requirements are not met, the application will be published, in general, as originally f