Recent Significant Rule Makings and Changes in USPTO Practice February 3, 2004

February 3, 2003 1

Recent Significant Recent Significant Rule Makings and Rule Makings and Changes in USPTO Changes in USPTO PracticePracticeFebruary 3, 2004February 3, 2004Robert Clarke Senior Legal AdvisorOffice of Patent Legal Administration(703) 305-9177, [email protected]

February 3, 2003 2

TOPICS TOPICS

1. Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Rule Making

2. Patent Cooperation Treaty – Final Rule3. Image File Wrapper (IFW) – Final Rule ( Revised Amendment Practice)4. Elimination of CPA Practice – Final Rule5. Notice of Foreign Filing – OG Notice6. Reexamination Guidelines – OG Notice7. E-Patent Reference – OG Notice8. Unity of Invention Study – OG Notice9. Centralized Facsimile Transmissions – OG Notice10. Correspondence Filed by Individuals Whose Names Have Been Removed

From The Register – OG Notice 11. Changes to Support Implementation of the United States Patent and

Trademark Office 21st Century Strategic Plan – Proposed Rule Making12. Clarification of Power of Attorney Practice, and Revisions to Assignment

Rules – Proposed Rule Making

February 3, 2003 3

Published Notice of Final Rule Making:

– Changes to Implement the 2002 Inter Partes Reexamination and other Technical Amendments to the Patent Statute (RIN 0651-AB57).

– 68 FR 70996 (Dec. 22, 2003), 1278 Off. Gaz. Pat. Office 218 (Jan. 20, 2004) (final rule).

Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Rule Making

February 3, 2003 4

Pursuant to Public Law 107-273, §13106, the requester of an inter partes reexamination may now: – (1) Appeal adverse decision of Board of Patent Appeals and

Interferences to Court of Appeals for Federal Circuit, and (2) Participate in Patent Owner’s Appeal to the Court.

– Sections 1.983 and 1.304 are amended to implement §13106 of Public Law 107-273.

– Patent owner/ requester cross appeals are permitted.– Patent owner and requester may participate in in each other’s

Appeals to the Court.– Provides level playing field for appeal in inter partes reexam.– Does not apply to inter partes reexam commenced prior

to November 2, 2002.

Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Inter Partes Reexam

February 3, 2003 5

Rules are amended to give opportunity to remedy inadvertent defects in inter partes reexamination appeal process:– Prevents unduly harsh result of loss of appeal rights for

technical inadvertency. – Rights expanded for appellant & respondent briefs

(§§ 1.965, 1.967) to cover all requirements of the appellant & respondent rules.

– Commensurate remedy rights newly provided for notice of appeal or cross appeal (§ 1.959) and rebuttal brief (§ 1.971).


February 3, 2003 6

Rules are amended to clarify that patent owner or its privies cannot file request for inter partes reexam.

– Technical corrections section 13202 of Public Law 107-273 eliminated possible inferences in the statute to the contrary.

– 37 CFR 1.913 is amended to explicitly prohibit patent owner (or privies) filing of inter partes reexam.


February 3, 2003 7

Rule 1.1(c) is amended to provide separate mail stops for addressing corespondence to the Office in ex parte reexamination proceedings and inter partes reexamination proceedings. – “Mail Stop Ex Parte Reexam”

• Existing “Mail Stop Reexam” re-designated “Mail Stop Ex Parte Reexam.”

• Use Mail Stop Ex Parte Reexam only for original request papers for ex parte reexamination.

– “Mail Stop Inter Partes Reexam”• New mail stop provided for inter partes reexamination

proceedings.• Use Mail Stop Inter Partes Reexam for original request papers and

all subsequent correspondence filed in the Office (other than correspondence to Solicitor pursuant to § 1.1(a)(3) and § 1.302(c). (Central location for complex proceedings.)

–


February 3, 2003 8

Section 1.13(b) is amended to eliminate requirement for an attestation to the signature of Director of USPTO for certified copies of documents:– Public law 107-273, section 13203(c), eliminated

requirement in 35 U.S.C. 153 that signature of the Director for issued patents be attested to by an officer of the USPTO.

– The revision of § 1.13(b) makes an analogous change for efficiency in the patent process.

Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Efficiency Amendments

February 3, 2003 9

Section 1.78 is amended to make petition procedure set forth in § 1.78(a)(3) applicable to delayed benefit claim in an abandoned international application.– Public Law 107-273, section 13205, amended statute to

apply AIPA eighteen-month publication amendments which were directed to 35 U.S.C. 119 and 120, also to international stage of international application.

– Accordingly, § 1.78(a)(3) is amended to apply to unintentionally delayed benefit claims submitted in an abandoned international application that never entered national stage under 35 U.S.C. 371.

Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Eighteen Month Publication

February 3, 2003 10

Sections 1.14 and 1.417 are amended to reflect that filing of translation of international publication, as opposed to international application, is required for patent owner to obtain reasonable royalty:– Public law 107-273, section 13204, made this

technical correction of the statute.

Final Rule Implementing Public Law 107-273 (2002) and Ancillary Matters – Eighteen Month Publication

February 3, 200311

Effective Date: January 1, 2004

January 2004 Revision of Patent Cooperation Treaty Application Procedure, 68 Fed. Reg. 59881 (October 20, 2003)(final rule).

Patent Cooperation Treaty

February 3, 2003 12

PCT Reform - Background

PCT Assembly Actions:September 2001, adopted change in Article 22(1) time limit from 20 to 30 monthsSeptember 2002, adopted proposals as recommended by the PCT Reform Committee– Expanded International Search including the issuance of an International

Search Opinion– Automatic designation and election of contracting parties– Simplified fee system with a “flat” international filing fee– Relaxation of signature and other requirements for filing

February 3, 2003 13

Expanded Search Procedure

When establishing the International Search Report, the ISA will also establish a Written Opinion

ISA Written Opinion to be adopted by the IPEA as the first Examination Written Opinion

If no Demand is filed the ISA Written Opinion will be issued at 30 months by the International Bureau as a report with equal status to the IPER

February 3, 2003 14

Automatic Designation / Election

The filing of an International Application will constitute: – A designation of all contracting States– An indication of all types of protection– An indication of both national and regional filing

Similarly, filing of a Demand will constitute the election of all designated States

February 3, 2003 15

PCT Fee Structure and New FeesFee system is simplified to a single “flat” international filing fee because with the elimination of separate designations there is no longer a need for the multiple filing fee system (i.e., Basic Fee + Designation Fees)New U.S. PCT Fees:– Transmittal Fee: $300.00– Search Fee:

• Corresponding § 111(a): $300.00• No corresponding § 111(a): $1,000.00• Per additional invention: $1,000.00

– Preliminary examination fee:• USPTO was ISA: $600.00• USPTO not ISA: $750.00• Per additional invention: $600.00

February 3, 200316

Image File Wrapper (IFW)Final Rule

Effective date: July 30, 2003Changes to Implement Electronic Maintenance of Official Patent Application Records, 1272 Off. Gaz. Pat. Office 197 (July 29, 2003), 68 Fed. Reg. 38611 (June 30, 2003)(final rule).

February 3, 2003 17

The Office is implementing the Image File Wrapper (IFW) system which is an image technology system for storage and maintenance of records associated with patent applications.Paper components of the application file contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications will be scanned into the IFW system as electronic image files.All processing and examination will be performed with the electronic image files, instead of paper source documents, by all Office personnel.

IFW Implementation

February 3, 2003 18

The electronic image files in the IFW system will be the official records of the applications (the transition started on 6/30/03).

– See Notification of United States Patent and Trademark Office Patent Application Records being Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17, 2003).

The image technology system will replace the standard paper processing of applications.

IFW Implementation (Continued)

February 3, 2003 19

Applicants may electronically access their applications in the IFW system via private side of PAIR. The contents of published applications that are in the IFW system will generally be viewable by the public through the public side of PAIR in FY04.The system is consistent with the data processing system used by the European Patent Office (EPO). The Office plans to increase information exchange by leveraging common storage architecture.

IFW Implementation (Continued)

February 3, 2003 20

Information Disclosure Statement Copies of cited U.S. patents and U.S. application publications are not required for IDS submissions filed in:

– U.S. applications filed after June 30, 2003;

– International applications that have entered the national stage under 35 U.S.C. 371 after June 30, 2003; and

– Any applications if the IDS submissions are filed electronically in compliance with the Office’s Electronic Filing System (EFS).

See Information Disclosure Statements May Be Filed Without Copies of U.S. Patents and Published Applications in Patent Applications filed after June 30, 2003, 1273 Off. Gaz. Pat. Office 55 (August 5, 2003). http://www.uspto.gov/web/offices/com/sol/og/2003/week31/patdisc.htm

February 3, 200321

Revised Amendment Practice37 CFR 1.121

Effective date: •All amendments filed on or after July 30, 2003 must comply with the revised 37 CFR 1.121, except amendments to the specification and claims filed in reissue applications and reexamination proceedings.•A sample amendment document and Q’s and A’s are posted on the USPTO’s website at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/moreinfoamdtprac.htm

February 3, 2003 22

Highlights:1. Each section of an amendment paper must start on a separate sheet.

– For example: each of the following sections must start on a separate sheet: Introductory comments, Amendments to the Specification, Amendments to the Claims, Amendments to Drawings, and Remarks.

2. Submit only one version of the replacement paragraph or section, or currently amended claims, with markings (i.e., strikethrough, double brackets [[ ]], or underlining), to show the changes relative to immediate prior version.

– The requirement to provide a separate, clean version has been eliminated, except when applicant submits a substitute specification.

Revised Amendment Practice (Continued)

February 3, 2003 23

3. When there is any amendment to a claim, a claim listing of all claims ever presented in the case must be supplied in ascending numerical order.

An example of a claim listing is as follows:

Claims 1-5 (canceled)Claim 6 (previously presented) A bucket with a handle.Claim 7 (withdrawn) A handle comprising an elongated wire. Claim 8 (withdrawn) The handle of claim 7[[6]] further comprising a plastic grip.Claim 9 (currently amended) A bucket with a green blue handle. Claim 10 (original) The bucket of claim 9 wherein the handle is made of wood. Claim 11 (canceled)Claim 12 (not entered)Claim 13 (new) A bucket with plastic sides and bottom.

Amendments to Claims

February 3, 2003 24

What is a claim listing?– A claim listing must include:

• The claim number of every claim ever presented in the application, whether entered or not;

• A status identifier, in parentheses, following each claim number;

• The text of all pending claims (including withdrawn claims); and

• Markings to show the changes made only in the current amendment relative to immediate prior version.

– The claims in the listing (in the current amendment) will replace all prior versions, and listings, of claims in the application.

Amendments to Claims (Continued)

February 3, 2003 25

Canceled claims and not entered claims may only have a “canceled” or “not entered” status identifier after the claim number. The text must not be supplied.

Grouping of Claims – consecutive canceled claims or not entered claims may be aggregated into one line. – Examples: Claims 1-5 (canceled) Claims 20-25 (not entered)

New or added claims must have “new” as a status identifier– Do not underline the text of the new claims.

Amendments to Claims (Continued)

February 3, 2003 26

Markings to Show Changes:– The following must include markings to show all changes relative

the immediate prior version:• Replacement paragraphs or sections, • Replacement abstracts, • Currently amended claims, and • Substitute specifications.

– Added text must be shown by underlining. – Deleted text must be shown by strikethrough with 2 exceptions.


February 3, 2003 27

Markings to Show Changes (cont’)– Deleted text must be shown by strikethrough (e.g.,

strikethrough), with 2 exceptions: 1. For deletion of five or fewer consecutive characters, double

brackets [[ ]] may be used (e.g., [[eroor]]); and2. If strikethrough cannot be easily perceived, deleted text

must be shown by double brackets [[ ]] around the deleted text characters.

– For example: changing “4 corners” to “three corners” should be indicated by “three[[4]] corners”.


February 3, 2003 28

The location of the paragraph or section to be deleted or replaced, or where a new paragraph or section is to be added, must be unambiguously identified.– The location can be identified by using a few words at the beginning and/or the end

of the paragraph or section.

Do not underline the text of a new paragraph or section.

Deletion of a paragraph or section must only include an instruction to delete, and the location of the paragraph or section.

Replacement paragraph or section must be a marked-up version showing the changes.

A clean version of any replacement paragraph or section must not be submitted in addition to a marked up version, except when applicant submits a substitute specification.

Amendments to Specification

February 3, 2003 29

Amendment to drawings must include:– Replacement drawing sheet showing amended figures which

include the desired changes, without markings, on a separate sheet in compliance with §1.84; and

– Explanation of the changes in the remarks, or preferably, in the drawing amendments section, of the amendment paper.

– Optional unless required by examiner:• Annotated drawing sheet – a marked-up copy of the

amended figure(s) with annotations showing the change(s) may be submitted, or required by the examiner.

Amendments to Drawings

February 3, 2003 30

Any amendment after final (§1.116), or amendment filed with a request for continued examination (RCE) under §1.114, must include markings showing the changes relative to the last entered amendment.

– Do not include markings to show changes relative to any unentered amendment.

– Applicant should not assume that an after final amendment is entered because after final amendments are not entered as a matter of right (§1.116).

After Final Amendments

February 3, 2003 31

Applicants will be notified of any amendment paper that is not accepted because the changes do not comply with revised §1.121.– For preliminary amendments and replies to non-final Office actions or

notices, • A Notice of Non-Compliant Amendment identifying the problem

section(s) will be mailed; and • A period for reply shall be given; but • Patent term adjustment (PTA) reductions may be incurred. See

§1.704(c)(7).– For after-final amendments,

• Non-compliance will be indicated in an advisory action; and• The time period for reply continues to run from the mailing date of

the final Office action. – See MPEP 714.03 (8th Ed. 1st Rev., Feb. 2003).

Treatment of Non-Compliant Amendments

February 3, 200332

Elimination of CPA Practice as to Utility and Plant Applications – Final Rule

Effective date: July 14, 2003Elimination of Continued Prosecution Application Practice as to Utility and Plant Patent Applications, 68 Fed. Reg. 32376 (May 30, 2003), 1271 Off. Gaz. Pat. Office 143 (June 24, 2003)(final rule).

February 3, 2003 33

Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications.

Any CPA filed in a utility or plant application that was filed on/after June 8, 1995 will be treated as a request for continued examination (RCE) under §1.114.

– Note: If the request for a CPA does not satisfy all of the RCE requirements under §1.114, the request will be treated as an improper RCE.

Any CPA filed in a utility or plant application that was filed before June 8, 1995 will be treated under 37 CFR 1.53(e) as an improper application.CPA practice remains in effect for design applications.

Elimination of CPA Practice

February 3, 200334

Notice of Foreign Filing

• Clarification of the United States Patent and Trademark Office’s Interpretation of the Provisions of 35 U.S.C. 122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office 22 (July 1, 2003).

February 3, 2003 35

The notice clarifies that:

(1) If an applicant makes a nonpublication request and then rescinds the nonpublication request before/on the date a counterpart application is filed in an eighteen-month publication country, the application will be treated as if the nonpublication request was never made.

(2) If an applicant makes a nonpublication request, subsequently files a

counterpart application in an eighteen-month publication country and also files a notice of this foreign filing within forty-five days of the date such counterpart application was filed, the applicant is not required to rescind the nonpublication request.

Notice of Foreign Filing

February 3, 2003 36

The notice clarifies that (continued):(3) If an applicant makes a nonpublication request and subsequently files a counterpart application in an eighteen-month publication country before the nonpublication request is rescinded, the applicant is required to notify the USPTO of the foreign filing not later than forty-five days after the date such counterpart application was filed to avoid abandonment of the application (even if no one recognizes that the application is abandoned). (4) When an application is abandoned due to the failure to timely notify the USPTO of the filing of a counterpart application in an eighteen-month publication country, applicant’s sole remedy to restore the application to pending status is by filing a petition under 37 CFR 1.137(b) to revive the abandoned application.

Notice of Foreign Filing (Continued)

February 3, 200337

Reexamination Guidelines

Effective Date: November 2, 2002

Revised Guidelines for Usage of Previously Cited/Considered Prior Art In Reexamination Proceedings, 1272 Off. Gaz. Pat. Office 24 (July 1, 2003).

February 3, 2003 38

This notice sets forth reexamination policy and practice now in effect as a result of the revision of the reexamination statute made by the Public Law 107-273 (2002), which, in effect, overruled In re Portola, 100 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). See In re Robert T. Bass, 65 USPQ2d 1156, 1157 (Fed. Cir. 1997).

Permits reexamination on the basis of prior art that was previously cited by or to, or considered by, the USPTO.

In any reexamination ordered on or after November 2, 2002 (the effective date of the statutory revision), reliance on old art does not necessarily preclude the existence of a substantial new question of patentability that is based exclusively on that old art.

Reexamination Guidelines

February 3, 200339

E-Patent Reference Pilot

See Notice of Office Plan to Cease Supplying Copies of Cited U.S.Patent References With Office Actions, and Pilot to Evaluate The Alternative of Providing Electronic Access to Such U.S. Patent References (signed 12/1/03) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html.

February 3, 2003 40

E-Patent Reference Pilot

The Office plans in the near future to stop mailing copies of U.S. patents and U.S. patent application publications (U.S. References) with Office actions.

A. Two month pilot (starting December 1, 2003).B. Continue mailing paper U.S. References during the pilot.C. U.S. References will be available to download as Adobe.

Portable Document files (.pdf) in one downloading step.D. Office will evaluate pilot and post notice before stopping

the mailing of paper copies.

February 3, 2003 41

E-Patent Reference Pilot (continued)

Practitioners/pro-se applicants should develop internal processes to use E-Reference and do the following 4 steps:

1. Get a free Public Key Infrastructure (PKI) digital certificate from the Office. The full instructions for obtaining a PKI digital certificate are available at the Office’s Electronic Business Center (EBC) web page at: <http://www.uspto.gov/ebc/downloads.html>.

• The PKI digital certificate is required to use:i. Electronic Filing System (EFS)ii. Private Patent Application Information Retrieval

(PAIR)

February 3, 2003 42


2. Get a customer number from the Office:i. Download and complete the Customer Number

Request form, PTO-SB125, at: http://www.uspto.gov/web/forms/sb0125.pdf.

ii. Associate your registration number with a customer number by adding your registration number to the Customer Number Request form.

iii. The completed form can then be transmitted by facsimile to the Electronic Business Center at (703) 308-2840, or mailed to the address on the form.

February 3, 2003 43


3. Associate an application’s Correspondence Address with your Customer Number:

A description of associating a customer number with an application is described at the EBC web page at: http://www.uspto.gov/ebc/registration_pair.html.

4. Arrange for appropriate Internet access.

February 3, 2003 44


Having performed steps 1 to 4, a practitioner or unrepresented pro se applicant will be able to access application information using their PKI certificate to view the Private PAIR Screen for applications which have the correspondence address associated with your customer number. When references are available for downloading, a reference button is displayed as shown on the next page.

February 3, 2003 45


New Button In Private PAIR To Display References

February 3, 200346

TC1600 Restriction Practice Action Plan and Unity of Invention Study

Next Steps•Review of TC1600 Restriction Practice Action Plan •Summary of Public Comments

February 3, 2003 47

The action plan includes 5 initiatives:1. Publish Examples Of Claim Sets2. Emphasis On Rejoinder Practice3. Examiner Training On Restriction Practice 4. Enhanced Review Of Restriction Requirements 5. Continuous Assessment

I. Review of TC1600 Restriction Practice Action Plan

February 3, 2003 48

Request for Public Comments See Request for Comments on the Study of the Changes Needed To Implement a Unity of Invention Standard in the United States, 68 Fed. Reg. 27536 (May 30, 2003), 1271 Off. Gaz. Pat. Office 98 (June 17, 2003).

Summary of Public Comments (26) and Restriction Reform Options Study

See Summary of Public Comments and the Restriction Reform Options to be Studied by the United States Patent and Trademark Office (signed November 17, 2003) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html.

Unity of Invention Study

February 3, 2003 49

Effective December 1, 2003, for all official patent application related correspondence for organizations reporting to the Commissioner of Patents:

– Correspondence that is hand-carried (or delivered by other delivery services, e.g., FedEx, UPS, etc.) must be delivered to the Customer Window (with a few exceptions):

2011 South Clark PlaceCrystal Plaza Two, Lobby, Room 1B03Arlington, VA 22202

– Correspondence that is transmitted by facsimile must be directed to the central facsimile number, (703) 872-9306 (with a few exceptions).

See Centralized Delivery and Facsimile Transmission Requirements for Patent Application Related Correspondence, 1275 Off. Gaz. Pat. Office 200 (October 28, 2003).

Centralized Delivery of Hand-Carried Papers and Facsimile Transmissions

February 3, 2003 50

Correspondence Filed by Individuals Whose Names Have Been Removed From The Register

Practitioners whose names have been removed from the register due to the failure to reply or provide information requested by the Director of the Office of Enrollment and Discipline (OED) under 37 CFR 10.11(b) are not entitled to practice before the USPTO until reinstated. – E.g., a failure to reply to a survey pursuant to 37 CFR 10.11(b)

conducted by OED may result in the removal of the practitioner’s name from the register.

– The names of all active registered practitioners are available at http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html.

See Correspondence Filed By Individuals Whose Names Have Been Removed From The Register Pursuant to 37 CFR 10.11(b) (signed 10/17/03) available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html.

February 3, 2003 51

Correspondence Filed by Individuals Whose Names Have Been Removed From The Register

(Continued)Correspondence signed by practitioners whose names have been removed from register will be treated as improperly signed and will not be entered. See MPEP 714.01(a).– The Office will notify the first named practitioner whose name

is still on the register (or the first named inventor or assignee of record, where appropriate) of the status and advise that a duplicate correspondence properly signed must be furnished or a ratification is required.

– Applicant must timely submit a properly signed correspondence or ratify the previously filed correspondence to avoid abandonment of the application,

• e.g., within the period for reply set in the prior Office action if the application is under final rejection.

February 3, 2003 52

Notice of Proposed Rule Making,68 FR 53815 (September 12, 2003);

1275 Off. Gaz. Pat. Office 23 (October 7, 2003)

A copy of the Federal Register notice appears at the Office’s Internet Web site www.uspto.gov at the Federal Register notices web page, presently located at http://www.uspto.gov/web/menu/current.html#register

Changes to Support Implementation of the United States Patent and Trademark Office

21st Century Strategic Plan

February 3, 2003 53

Electronic Signatures 37 CFR § 1.4

For example:– Practitioner may create a document and e-sign it on a

computer, and then transmit it via facsimile directly from the computer to the Office.

– An affidavit or a declaration may be e-signed by an applicant, and then electronically sent to the practitioner, e.g., via the Internet. The practitioner can transmit the e-signed document via facsimile directly from a computer to the Office or mail a paper copy of the e-signed document to the Office.

February 3, 2003 54

Electronic Signatures, 37 CFR § 1.4 Example 1

Option 1: /John T. PRACTITIONER, Reg. #123456/ Option 2: /John T. PRACTITIONER/ Reg. #123456

These are the required e-signature options for a registered practitioner who is signing pursuant to § 1.33(b)(1) or (b)(2).

Either option is a proper e-signature because:1. It is between two forward slashes (/…/);2. It is the registered name of the practitioner (note: this would be a new

requirement for registered practitioners);3. Only the family name is entirely in capital letters;4. The e-signature is composed of letters, numbers, spaces, and punctuation

marks; and5. The registration number with a number character is part of the e-signature

(Option 1) or adjacent to the e-signature (Option 2).

February 3, 2003 55

Electronic Signatures, 37 CFR § 1.4 Example 7A (recommended)

/Able Quincy INVENTOR/ This is a preferred e-signature for someone who is not a

registered practitioner.

It is a proper e-signature because:1. It is between two forward slashes (/…/);

2. Where only the e-signature is provided and it includes a first, middle, and last name, it is assumed to be the signer’s actual name;

3. The family name is entirely in capital letters; and

4. The e-signature is composed entirely of letters and spaces.

Below the signature: Nothing should be provided because anything that is provided is likely to cause confusion.

Correspondence with an e-signature as set forth in Ex. 7A will be accepted.

February 3, 2003 56

Drawings May Be Submitted by Facsimile - 37 CFR § 1.6

Black and white drawings would be permitted to be transmitted to the Office by facsimile under § 1.6(d)(4); Exception: new applications including drawings cannot be faxed to the Office.

1. Photographs or drawings with details should not be sent by facsimile;2. Color drawings must continue to be hand-carried or mailed to the

Office instead of being sent by facsimile; and3. Transmission via facsimile may degrade the quality of the drawings,

but the Office would generally print what is filed.

The Office has been permitting drawings to be transmitted via facsimile when they are accompanying the issue fee.

See Payment of the Issue Fee and Filing Related Correspondence by Facsimile, 1254 Off. Gaz. Pat. Office 91 (Jan. 15, 2002).

These faxed drawings have been found to be of acceptable quality.

February 3, 2003 57

Petition Fees37 CFR § 1.17

Petition fees would be adjusted to more accurately reflect the Office’s current cost of treating petitions pursuant to 35 U.S.C. § 41(d).

Three levels of petitions fees would be provided:1. $130 current fee retained for petition fees in § 1.17(h);

• e.g., § 1.102 to make an application special

2. $200 petition fee created in § 1.17(g); and• e.g., § 1.47 nonsigning inventor and § 1.59 expungement

3. $400 petition fee created in § 1.17(f).• e.g., § 1.53(e) to accord a filing date, § 1.182 for questions not

specifically provided for, and §1.183 for waiver of requirement of the rules

February 3, 2003 58

Small Entity37 CFR § 1.27

Security Interests: would clarify that untriggered security interests in an application or patent (e.g., held by a large entity bank in return for financing) would not be a sufficient interest to bar entitlement to small entity status, §§ 1.27(a)(1), (a)(2)(i), and (a)(3)(i).

SBA requirements: would clarify that certain Small Business Administration requirements relating to a location in the U.S. or making a significant contribution to the U.S. economy would not apply to patent applicants, §1.27(a)(2)(ii).

February 3, 2003 59

Claim for Foreign Priority37 CFR § 1.55

If the latest application in a chain of applications claims a foreign priority but it is filed more than 12 months after the foreign application, then – Each intermediate application* would be required to contain a claim

for foreign priority in compliance with §1.55 to the prior foreign application; (see proposed §1.55(a)(1)(iii)); and

– The priority claim would be required to be timely presented in each intermediate application (see proposed §1.55(c)).

Example: Foreign application filed 1/8/04. Nonprovisional application 1 filed 1/5/05 and Nonprovisional application 2 filed 10/3/06. Nonprovisional application 1 as well as Nonprovisional application 2 would need to have a claim for foreign priority.

*any nonprovisional application, or international application designating the U.S., for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) and §1.78(a) in the later-filed application.

February 3, 2003 60

Incorporation By Reference 37 CFR § 1.57 (A New Rule) Priority & Benefit Claims

Priority/benefit claims would act as a limited incorporation by reference of a prior application. Omitted portion of the specification or drawing(s) could be added to the application (§ 1.57(a)) where:– a claim for priority under § 1.55 or a claim for benefit under § 1.78

was present on the date of receipt of the application, – the omitted portion was inadvertently omitted,– the omitted portion is completely contained in the prior-filed

application, and– amendment to include the omitted portion is requested within a time

period set by the Office, but in no case later than close of prosecution, § 1.114.

The examiner would be able to require an English language translation of the prior-filed application and identification of where the omitted portion can be found in such application, § 1.57(a)(1).

February 3, 2003 61

Incorporation By Reference 37 CFR § 1.57 (A New Rule) Essential Material

Essential material to be incorporated would require specific trigger language: – “incorporated by reference,” § 1.57(b).

Would be able to incorporate essential material in a U.S. patent application publication (as well as U.S. patent), which does not itself incorporate such material, § 1.57(c): – would no longer be able to incorporate to applications for

which the issue fee has been paid but the application has not yet issued as a patent.

Would provides a definition for essential material based on 35 U.S.C. 112, ¶¶ 1, 2 and 6, and §§ 1.57(c)(1)-(3).Examiner would be able to require a copy of incorporated material along with a statement that the copy consists of the same material incorporated, § 1.57(e).

February 3, 2003 62

Requirements for Information 37 CFR § 1.105

Would add a (nonlimiting) example as to what applicant could be questioned about relating to technical information known to applicant concerning (§ 1.105(a)(1)(viii)):– interpretation of the related art,– the disclosure,– the claimed subject matter,– other information pertinent to patentability, or– the accuracy of the examiner’s stated

interpretation of such items.

February 3, 2003 63

Supplemental Replies37 CFR § 1.111

Supplemental replies, § 1.111(a), would no longer be entered as a matter of right. Supplemental replies would be entered if:– filed before end of a statutory period for reply when limited to:

• cancellation of claims,• adoption of an examiner suggestion(s), or• placement of the application in condition for allowance, or

– filed within the period when action by the Office is suspended under §§1.103(a)-(c).

The status of supplemental replies would be similar to the way after final amendments are treated.This should eliminate a significant burden on the Office caused by a small percentage of applicants who do not file an appropriate reply as required by § 1.111.

February 3, 2003 64

Preliminary Amendments37 CFR § 1.115

Preliminary amendments filed on (or prior to) the filing date of the application would automatically be part of the application, § 1.115(b):– Current practice requires a petition under § 1.182 where a

preliminary amendment is not referred to in an executed declarationIf a preliminary amendment filed on (or prior to) the filing date of the application, § 1.115(b):– is determined to contain matter not otherwise included in the

specification, and – the preliminary amendment is not referred to in a § 1.63 oath or

declaration, – then a new § 1.63 oath or declaration would be required to refer to

the preliminary amendment.The change would provide a consistent way of treating preliminary amendments, eliminate the need for filing a petition and save processing time.

February 3, 2003 65

Reissue Applications 37 CFR §§ 1.178, 1.179

Would eliminate requirement for physical surrender of the original patent, § 1.178.

Would eliminate notification in the patent file that a reissue application has been filed and that reissue examination has been terminated. Public PAIR now provides this information. §1.179 would be removed and reserved.

February 3, 2003 66

Requirements Before Making Nonpublication Request 37 CFR § 1.213

Would clarify: To support a nonpublication request, the certification, that “the invention disclosed in the application has not and will not be the subject of an application filed in another country…,”:– must be based on applicant’s intent at the time the

nonpublication request is filed that the application will not be disclosed in a counterpart application subject to 18 month publication, § 1.213(a)(4):

– must be supported by actual inquiry consistent with §10.18(b):

• not just the absence of any intent or plan concerning the filing of a counterpart application subject to 18 month publication’ and

• not on past practices or tendencies of applicant.

February 3, 2003 67

Notice of Foreign Filing37 CFR § 1.213

Notice of foreign filing is independent of rescission: – Would clarify that the mere filing of a request to rescind a

previously filed nonpublication request (where a counterpart application was subsequently foreign filed subject to an 18 month publication):

• does not comply with the foreign filing notice requirement of 35 U.S.C 122(b)(2)(B)(iii) to provide notice to the Office within 45 days of the filing of a counterpart application subject to an 18 month publication, § 1.213(b) and (c).

– See Clarification of the United States Patent and Trademark Office’s Interpretation of the Provisions of 35 U.S.C. § 122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office 22 (July 1, 2003).

February 3, 2003 68

Rescission37 CFR § 1.213

Would clarify that a request to rescind a nonpublication request is not appropriate unless:– the person signing the request has made inquiry

consistent with § 10.18(b), and– determined that a nonpublication request was in fact

previously filed in the application in which the request to rescind is directed.

Would notify practitioners who file a request to rescind a nonpublication request in applications for which a nonpublication request was never filed that they:– may be subject to sanctions, disciplinary action, or

both, discussion of § 1.213(b).

February 3, 2003 69

ContactsOffice of Patent Legal Administration (OPLA):– For general questions on the Changes to Support Implementation of the United

States Patent and Trademark Office 21st Century Strategic Plan:• Hiram H. Bernstein (Senior Legal Advisor) (703) 305-8713• Robert J. Spar (Director) (703)308-5107

– For specific rules:• § 1.4, Michael Lewis (703) 306-5585• § 1.6, Karin Ferriter (703) 306-3159• § 1.17, Anton Fetting (703) 305-8449• § 1.19, Michael Lewis (703) 306-5585• § 1.27, Eugenia Jones, (703) 306-5586• § 1.52 (translations) (font size), Karin Ferriter (703) 306-3159• § 1.52 (compact discs), Michael Lewis (703) 306-5585• § 1.57, Michael Lewis (703) 306-5585• § 1.58, Michael Lewis (703) 306-5585

February 3, 2003 70

Contacts (continued)

– § 1.78, Eugenia Jones (703) 306-5586– §§ 1.83, 1.84, 1.165, Karin Ferriter (703) 306-3159)– §§ 1.91, 1.94, Hiram Bernstein (703) 3058713– § 1.98, Joni Chang (703) 308-3858– § 1.102, James Engel (703) 306-3159– § 1.105, Anton Fetting (703) 305-8449– § 1.111, Joni Chang (703) 308-3858– § 1.115, Fred Silverberg (703) 305-8986– §§ 1.136, 1.550, 1.956 Kenneth Schor (703) 308-6710– §§ 1.137, 1.175, 1.178, 1.179, Joe Narcavage (703) 305-1795– §§ 1.213, 1.215, Mark Polutta (703) 308-6710– § 1.291, Joe Narcavage (703) 305-1795– § 1.311, Cynthia Nessler (703) 305-0271– § 1.705, Kery Fries (703) 308-0687

February 3, 200371

Clarification of Power of Attorney Practice, and Revisions to Assignment Rules, 66 Fed. Reg. 38258 (June 27, 2003), 1272 Off. Gaz. Pat. Office 181 (July 29, 2003)(proposed rule).

Power of Attorney Practice and Assignment Rules –

Notice of Proposed Rule Making

February 3, 2003 72

Power of Attorney Practice and Assignment Rules

Significant Changes Being Proposed

The terms “power of attorney” and “Customer Number” are defined. Power of attorney to specific attorneys limited to ten, or fewer.

If power of attorney is to be given to more than ten registered practitioners, applicants must use the Office’s Customer Number practice. (37 CFR § 1.32)

The “associate” power of attorney practice will be discontinued. (37 CFR § 1.34)

Only copies of assignment documents may be submitted. Original assignment documents will no longer be returned to applicants/patentees. (37 CFR § 3.24)

February 3, 200373

Thank You

Recent Significant Rule Makings and Changes in USPTO Practice February 3, 2004

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