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Patent Help - Application Processes - Other

(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

   USPTO Customer Service Window, ATTN: Mail Stop AF

   Knox Building

   501 Dulany Street

   Alexandria, VA 22314

Submit the notice of appeal and the request via Patent Center.

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

  • Patent Center
     
  • 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:
    United States Patent and Trademark Office
    Customer Service Window
    Mail Stop Petitions
    Knox Building
    501 Dulany Street
    Alexandria, VA 22314
     
  • Selected types of the petitions handled by the Office of Petitions can also be filed as e-Petitions.
     
  • Facsimile transmission for all petitions, requests, and related inquiries must be directed to the USPTO Central FAX number 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:
    United States Patent and Trademark Office
    Customer Service Window (located on the Ballenger Avenue side of the Randolph Building)
    501 Dulany Street
    Alexandria, VA 22314
    (Hours of operation are 8:30 a.m. to midnight, Eastern Time, Monday through Friday).

Further information regarding mailing and hand carry procedures and addresses for the USPTO may be obtained from:

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.

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

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.

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.

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

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.

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 United States Patent and Trademark Office 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.

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 PatentPractice@uspto.gov .

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.

General - Patent Help - Application Processes - Other

No, you cannot 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 Patent Center. For additional information on Patent Center, 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 USPTO 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

Yes, you may personally deliver your patent application to the U.S. Patent and Trademark Office (USPTO). The USPTO, 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:

United States Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314

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://www.uspto.gov/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.

Patent Help - Application Processes - Technical Information - Other

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

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.

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.

Patent Help - Application Processes - Technical Questions - Technical Information - Other - Other

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 USPTO 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 USPTO 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.

Patent Help - Certificate of Correction - Other

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 USPTO Internet site at:
http://www.uspto.gov/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 USPTO 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: CustomerServiceCoC@uspto.gov 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: CustomerServiceCoC@uspto.gov

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.

Patent Help - Electronic Official Gazette - Patents (eOG:P) - Basics

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.

Patent Help - eOffice Action - Other

The e-Office Action program is a new USPTO 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.

USPTO 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 USPTO that Office communication is available for secure viewing and downloading in Patent Center. Opting into the program means that the USPTO 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.

A few steps make it simple and easy to begin participating in the USPTO’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 USPTO.

     

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 USPTO 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.

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

  • The USPTO.GOV domain must be listed in the ‘allow’ or ‘white’ list. 


    Additional spam filter configurations are: 

  • The subject name for e-Office Action notifications: USPTO: Patent Electronic System - Correspondence Notification for Customer Number XXXXX, where XXXXX refers to your Customer Number. 
  • The subject name for eGrant notifications: USPTO: Patent Electronic System - eGrant Notification for Customer Number XXXXX - where XXXXX refers to your Customer Number. 
  • The subject name for Postcard notification: USPTO: Patent Electronic System - e-Postcard Notification for Customer Number XXXXX - where XXXXX refers to your Customer Number. 
  • The ‘Sender address is noreply@uspto.gov. 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".

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.

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 USPTO. 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

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 USPTO patent electronic filing system.

For all other ePetitions, the filer must be a registered user of the USPTO 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 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 Web-based ePetition Quick Start Guide [PDF] for reference.

If you have any questions or concerns regarding filing in the patent electronic filing system, please contact the Patent EBC Monday ‐ Friday, from 6 a.m. to midnight Eastern Time, by emailing ebc@uspto.gov or calling 866‐217‐9197. 

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. 

 

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 the Web-based ePetition Quick Start Guide or by clicking the appropriate link in the above listing of web-based ePetitions.

  • 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))
     

General - Patent Help - General - Other

All USPTO forms are available on our Forms page.

Patent Help - General - Other

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 (USPTO) web site atwww.uspto.gov/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 USPTO 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://www.uspto.gov/learning-and-resources/support-centers/patent-and-trademark-resource-centers-ptrcs.

 

Public users may perform preliminary searches of patent information in a variety of formats including online and print at the United States Patent and Trademark Office (USPTO) 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 USPTO web site at https://ppubs.uspto.gov/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://www.uspto.gov/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.uspto.gov/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 United States Patent and Trademark Office 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.uspto.gov/external/portal/pair. See MPEP § 1730 for additional information regarding PAIR. To use Patent Center for change of correspondence address please see the Patent Center user guide.

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).

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.

Yes. For patent forms information, you may visit the U.S. Patent and Trademark Office Web site at http://www.uspto.gov/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 USPTO website at http://www.uspto.gov/web/patents/pubs/pdg0602.zip. For information on your nearest PTDL, you may visit PTDL Web site at http://www.uspto.gov/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://www.uspto.gov/web/offices/pac/mpep/mpep.htm.

For additional information, you may contact the USPTO 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 USPTO deposit account.

Orders may be placed via the following methods:

Order copies online

E-mail to dsd@uspto.gov

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 (USPTO) will send information on utility and design patent applications including forms for filing applications. To request this information, you may contact the USPTO 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.

Patent Help - Getting Started - Other - IP Basics

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

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 (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 (USPTO) 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 our patent webpage.

A property right granted by the government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention.

Patent Help - Getting Started - Other

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 Nicol Scott at Nicol.Scott@USPTO.GOV and Ranell Gray at Ranell.Gray@USPTO.GOV. The USPTO has very limited authority to terminate any security review.

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 USPTO patent electronic filing systems (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 USPTO 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.

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 USPTO at 800-PTO-9199 or 703-308-HELP or under Patent 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 USPTO 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 USPTO 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 USPTO does not necessarily endorse the views expressed or the facts presented on this site. Further, the USPTO 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 USPTO may uncover U.S. and foreign patents as well as non-patent literature.

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

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 USPTO 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.

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 USPTO does not cover sending information abroad for the preparation of a filing in the U.S.

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

Yes, a license for the USPTO 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 USPTO 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).

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.

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 USPTO website.

General - Patent Help - Getting Started - Other

The United States Patent and Trademark Office (USPTO) 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 open to the public and are located throughout the United States, including Alaska, Hawaii, and Puerto Rico. Visit your nearest PTRC to learn more about intellectual property concepts, search tools, and resources. Call the resource center before visiting to determine hours of operation and availability of trained PTRC librarians. To find your nearest PTRC, visit the PTRC Locations page. You may perform preliminary searches of patent information on the USPTO 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 (USPTO) 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 USPTO 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 USPTO web site at http://www.uspto.gov/patents-maintaining-patent/patents-assignments-change-search-ownership.

 

The U.S. Patent and Trademark Office (USPTO) is pleased to present Patent Center. Patent Center has a private section that provides a USPTO/Internet infrastructure capability to securely provide patent application status information to USPTO 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 USPTO 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.

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.

Fees & Payments - Fees – General Information - Patent Help - Getting Started - Other - Other

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.

Patent Help - Help for Inventors - Other

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 USPTO and independent inventors.

A. No. The application must be signed by the true inventor, and filed in the USPTO, 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) USPTO 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 United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.

Patent Help - Patent Business Goals - Other

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.

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.

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)

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.

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 USPTO practice with PCT guidelines.

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.

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

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.

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.

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.

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://www.uspto.gov/web/offices/dcom/olia/pbg/cpr.htm .

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.

Patent Help - Patent Law - Other

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

The publication will be available on the USPTO 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.uspto.gov/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 United States Patent and Trademark Office, 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.uspto.gov/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://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm). For more information on Patent Center please see the Patent Center user guide.

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.

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.

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.

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).

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, 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.

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.

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.

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.

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 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 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.

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.

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.

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 (PTO/SB/425), 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 PTO/SB/425 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.

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

The United States Patent and Trademark Office 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).

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 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.

For Pre-Grant Publication questions, please contact the PGPub hotline at (703) 605-4283 or PGPub@uspto.gov. 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 USPTO 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 USPTO 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.

No, provisional applications are not eligible for publication.

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, 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, 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.

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

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.

The new form PTO/SB/35 "Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)" is available at: http://www.uspto.gov/web/forms/sb0035.pdf [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://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

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.

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 USPTO 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 filed. No consideration will be given to requests for publication on a certain date. Such requests will be treated as a request for publication as soon as possible.

The publication cycle takes approximately 14 - 16 weeks and does not begin until the application is complete and ready for publication (e.g., an executed declaration has been filed and the filing fee has been paid).

The time period for requesting a republication to correct a material error made by the USPTO without a fee is 2 months from the publication date. If the applicant is willing to provide an EFS copy and pay the $430 republication fee, there is no time limit.

The entire application including the corrections will be published.

No.

No, in an application filed on or after 11/29/00, applicant may request early publication of an application with any conspicuous letter requesting early publication. The request must include the publication fee. See 37 CFR 1.18(d). Note that if early publication is requested, and the publication fee paid, applicant will not be required to pay the publication fee at allowance.

Yes. The time period to file corrected drawings is extendable up to 5 months under 37 CFR 1.136(a) and in an exceptional situation, further extendable under 37 CFR 1.136(b). These Notices have been corrected to make it clear that the time period is extendable.

Any request for the republication of an application previously published must be filed using the Electronic Filing System(EFS). If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed.

To correct or revise applicant or non-material errors, the applicant must pay publication and processing fees as set forth in 37 CFR § 1.18(d) (currently $300) and 1.17(i) (currently $130), respectively. If there is no payment of fees, the USPTO will send the applicant a letter requiring the fees. The republication of the application will be delayed.

There are no fees due for material errors, which are apparent from the USPTO records. These requests for corrected or revised publications must be filed within 2 months from the publication date of the patent application publication. This period is not extendable.

For more information on EFS, go to http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

If applicant requested the assignment information to be printed on the patent application publication, then the Office prints the assignee on the patent application publication. If no assignment information is included, then no assignee field will appear. There is no legal effect to this information when it is included or not included on a patent application publication (or patent). It is included for informational purposes only. Assignments are recorded in a special database upon payment of the statutory fee, and meeting other regulatory requirements. Assignment information is publicly available for patent application publications pursuant to 37 CFR 1.12(a)(1) from the Patent Assignment Search Room, which can be reached by telephone at (703) 308-2768.

If filed in a patent application, the terminal disclaimer must be signed by the applicant, assignee, or an attorney or agent of record, in accordance with 37 CFR 1.321(b)(1). If filed in a reexamination proceeding, the terminal disclaimer must be signed by the patentee, or an attorney or agent of record, in accordance with 37 CFR 1.321(a)(1).

In addition to providing a statement, the applicant must also amend the specification to disclose the names of the parties to the joint research agreement. See 35 U.S.C. 103(c)(2)(C) and 37 CFR 1.71(g).

Yes, the Office action can be made final (provided that no other new ground of rejection that was not necessitated by amendment is introduced) regardless of whether the claims themselves have been amended.

The terminal disclaimer must include a provision that the owner of the application or patent waives the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the disqualified patent or any patent granted on the disqualified application. The terminal disclaimer must also provide that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the disqualified patent, or any patent granted on the disqualified application are not separately enforced. Section 1.321(d) does not include a provision that the applicant or patentee agrees that such waiver and agreement shall be binding upon the owner of the rejected application or patent, its successors, or assigns because this is provided for in § 1.321(b).

35 U.S.C. 103(c)(3) defines joint research agreement as " a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention." See Pub. L. 108-453, 118 Stat. 3596 (2004). See also H.R. Rep. No. 108-425, at 8-9 (2003).

35 U.S.C. 103(c), as amended by the CREATE Act, continues to apply to subject matter (whether a patent document, publication, or other evidence) which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g), and which is being relied upon in a rejection under 35 U.S.C. 103(a).

If the subject matter also qualifies as a reference under 35 U.S.C. 102(a) or (b) and which is being relied upon in a rejection under 35 U.S.C. 103(a), 35 U.S.C. 103(c) cannot be relied upon to disqualify such subject matter until the applicant has shown that the subject matter is not prior art under 35 U.S.C. 102(a) or (b). For example, if the reference is a U.S. patent or U.S. patent application publication which is prior art under 35 U.S.C. 102(a) and (e), applicant could swear behind the reference's publication date pursuant to 37 CFR 1.131 to disqualify the reference as prior art under 35 U.S.C. 102(a), and then use 35 U.S.C. 103(c) to disqualify the reference, if appropriate.

If the rejection is anticipation under 35 U.S.C. 102(e), (f), or (g), 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome the anticipation rejection. Likewise, 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome any double patenting rejection.

No, WIPO only publishes an international application in a single publication language in accordance with PCT Article 21(2). WIPO may republish an international application in the same publication language when there is an error in the original publication from what should have published (e.g., publishes the wrong drawings or leaves out a page of claims, etc.). There currently is no vehicle for republication in a different language.

Yes.

An IA has two possible phases of processing: an international phase and a national stage phase. The international phase is when the search report and the preliminary examination report (if applicable) are prepared. A U.S. patent cannot be directly granted from the international phase of an IA, but can be issued directly from the national stage (35 U.S.C. 371) of an IA. The national stage is entered where certain requirements are met before the expiration of certain time limits (see 35 U.S.C. 371 and 37 CFR 1.491). The national stage of an IA is prepared by placing a copy of the IA, and other related papers, inside a regular US application file jacket, whereupon it is assigned a US application number, and processed under the US statutes and regulations applying to national stage applications. See the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001), sections 1893 et seq.

Examination test grades are available approximately two months after the exam. Grade information will automatically be sent to applicants by mail as soon as they are available. Re-grade information will be provided by mail as soon as they are processed. All re-grades are processed at the same time and results are mailed simultaneously. No status information will be available until after the re-grades are mailed. After you have passed the examination, your notification will be mailed to you and will include a registration data sheet and a provisional number. The provisional number allows you to practice before the U.S. Patent and Trademark Office during the Official Gazette public comment period. When using the provisional number it must be preceded by the letter "P" to indicate provisional status and you may not advertise yourself as registered. For more information, you may visit the USPTO's Office of Enrollment and Discipline Web site at http://www.uspto.gov/go/oed.

A register of attorneys and agents entitled to represent applicants for patents is maintained by the U.S. Patent and Trademark Office (USPTO). General Requirements for Admission to the Examination for Registration to Practice in Patent Cases Before the U.S. Patent and Trademark Office booklet describes the requirements for registration as an attorney or agent. It includes the application for registration to practice before the USPTO, requirements for admission to the examination, a description of the exam content, the deadline for filing, and a list of the cities where the exam is given. You may visit the USPTO's Office of Enrollment and Discipline Web site at http://www.uspto.gov/go/oed.

The U.S. Patent and Trademark Office (USPTO) strongly recommends that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications. For information on registered patent attorneys and agents in your area, you may visit the USPTO's Office of Enrollment and Discipline Web site at http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm. Upon request, the USPTO will send informational materials providing a broad overview of the process of obtaining a United States patent. They will include general requirements and a listing of the Patent and Trademark Depository Libraries.

The U.S. Patent and Trademark Office (USPTO) cannot make this choice for you. However, a general attorney may help you in making a selection from among those listed as registered practitioners on the USPTO roster. Also, some bar associations operate lawyer referral services that maintain a list of patent attorneys available to accept new clients. For information on registered patent attorney and agents in your area, you may visit the USPTO's Office of Enrollment and Discipline Web site at www.uspto.gov/go/oed.

Patent Help - Patent Search - Other

Information resources available on the USPTO Office of Patent Classification (OPC) site are:

  • The Cooperative Patent Classification (CPC) scheme and definitions. For Cooperative Patent Classification (CPC) frequently asked questions (FAQ) and training related information, please visit the bi-lateral CPC information page or start browsing the CPC scheme. 
  • The United States Patent Classification (USPC) schedules, definitions, and the Index to the USPC. For information about USPC (e.g., Patent Examiner's Handbook for USPC, etc.) please browse the USPC resources section and the Documents and Reports related to the USPC Manual of Classification on the Classification Standards and Development Home Page. 
  • The International Patent Classification (IPC) scheme, definitions, and catchword index. For information about IPC (e.g., IPC Guide, Nice Agreement, Locarno Agreement, etc.) please visit the International Classification Resources page on this site. 

 

Use the USPTO and EPO bi-lateral Cooperative Patent Classification (CPC) informational site.  Start browsing the CPC scheme available online.

Patents Ombuds Office - Basics

During the initial phone call from the Ombuds, the Ombuds will ask if you prefer to speak confidentially with him/her. If you do request confidentiality, the Ombuds will log your complaint into the database and will take no further action on that particular complaint at that time. The database has limited access so your confidentiality will be safeguarded. The Patents Ombuds Office Director will periodically review reports of the confidential complaints looking for trends or groups of complaints regarding the same or similar issues and will take action based on the trend or group of complaints without revealing the particulars of any individual complaints.

If you do want your specific issue resolved, it will be necessary to reveal information to the supervisory chain handling your application. Be assured, however, that only as much information as needed to understand the issue will be recorded in the database or revealed to the supervisory chain.

The Patents Ombuds Office is not intended to replace the already existing pathways for you to be assisted with your application (i.e., by contacting the examiner and SPE with your patent application questions first). The Ombuds is for those who have already used those pathways and been unable to get the assistance they need.

Patent Help - Popular Patent Application (EBC) Customer Questions - Other

Patent Center contains an Address & Attorney/Agent link for each application. Attorney/agents having Power of Attorney are listed under the Power of Attorney column. If no attorneys/agents are listed, or is incorrect, registered users should complete a Power of Attorney SB/81 form http://www.uspto.gov/web/forms/sb0081.pdf and submit through Patent Center, by fax to 571-273-8300 or by mail. Similarly, if the address or Customer Number indicated for Correspondence Address is incorrect, registered users should complete a Change of Correspondence Address SB/122 form (http://www.uspto.gov/web/forms/sb0122_fill.pdf) and submit through Patent Center, by fax to 571-273-8300 or by mail. Power of Attorney and Change of Correspondence Address are processed by the Application Assistance Unit (AAU). The AAU can be reached by phone at 571-272-4000, or by e-mail at HelpAAU@uspto.gov.

To correct file naming errors (EX: Filename.pdf), be sure to start your file name with [A thru Z, a thru z, or 0 thru 9] and make sure that file names do not use brackets or commas. Also do not start a file name with an underscore or hyphen. The last 4 characters of the file name must be lowercase .pdf (EX: .pdf, .txt or .zip). The file name can consist of any combination of characters selected from uppercase alphabet, lowercase alphabet and/or digits zero through nine: [A thru Z, a thru z, or 0 thru 9, _, -] Do not use brackets, commas, spaces or symbols; you can use an underscore or a hyphen within file name.

The length of file name is limited to a maximum of 100 characters including the required 4 character .pdf, .txt or .zip file extension. For more information please visit http://www.uspto.gov/patents/apply/applying-online/files-be-submitted-n…

Forms can be located at http://www.uspto.gov/forms/index.jsp.

The Documents and Transactions tab will not be available for applications filed prior to 6/30/2003. Users will still be able to view other information regarding the application. You may also order copies of any document from the Office of Public Records.

If you are a registered user and have a customer number and did not receive an acknowledgement receipt when filing an application through Patent Center, you should go to My Workbench and access the document that you just submitted. The document may take up to three hours for the acknowledgement receipt to generate. If the receipt is still not available after that timeframe, the user should contact the EBC to confirm that the documents were received. Do not resubmit your application until you have confirmed that it was not received. Non-registered users must call into the EBC.

Customer Number data may either be corrected electronically in Patent Center or by submitting the USPTO 124A Customer Number Data Change form located at http://www.uspto.gov/web/forms/sb0124-fill.pdf. You may mail the form or fax it to 571-273-0177. 

To use Patent Center for customer number data correction please see the Patent Center user guide.

To become a registered filer with the USPTO systems refer to our guide Getting Started - New Users at https://www.uspto.gov/patents/apply/applying-online/getting-started-new-users.

 

To associate existing patent applications to a Customer Number, you must complete and submit the Customer Number Upload Spreadsheet located at http://www.uspto.gov/patents/process/file/efs/guidance/register.jsp. This information can also be sent on a CD or USB memory stick to the address listed below if many applications need to be associated. Another method to associate an application to a customer number is to submit the Change of Correspondence Address form (SB/122) located at http://www.uspto.gov/web/forms/sb0122_fill.pdf. Unlike the Customer Number Upload Spreadsheet where multiple applications/patents can be listed, the Change of Correspondence Address form can be used to only associate a single application to a customer number. Only the customer number should be indicated on the SB/122 form with physical address left blank. Customer number associations using the SB/122 form are only processed by the Applications Assistants Unit or a Technology Center. The EBC processes the automated Upload Spreadsheet.

Mail Stop EBC Customer Number
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

To associate a PCT application in the International phase with a Customer Number for purposes of viewing the PCT application in Patent Center, please download and complete the Request to Update a PCT Application with a Customer Number form at http://www.uspto.gov/patents/process/file/efs/guidance/register.jsp and mail or fax it to the EBC at 571-273-0177.

The Electronic Business Center is unable to remove unwanted documents from an application. Please contact the Petitions office to request assistance with petitioning to have the document removed from the Image File Wrapper. The Petitions office can be reached at 571-272-3282

Patent Help - Post Prosecution Pilot - Other

Just-in-time training will be available to examiners and will include training slides, a Quick Reference Guide and FAQs. Once the Pilot starts, training will be provided both in-person and via WebEx. Training materials and other P3-related documents are available on the P3 website (coming soon).

Prioritized Patent Examination Program

While a petition for extension of time will be acted upon as per MPEP 710.02, if applicant files such a petition for an extension of time to file a reply or a request for a suspension of action, the prioritized examination of the application will be terminated.

Patent Help - Prioritized Patent Examination Program - Basics

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111, or having entered the national stage under 35 U.S.C. 371, in which a proper request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for prioritized examination. 

A proper RCE can only be filed if prosecution in the application is closed (e.g., the last Office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application). See 37 CFR 1.114(b). A Request for Prioritized Examination must be made before an Office action responsive to the RCE has been mailed. The application must contain, or be amended to contain, no more than 4 independent claims, 30 total claims, and no multiple dependent claims. 

Requests for Prioritized Examination of utility patent applications must be filed using Patent Center. Requests for Prioritized Examination of plant patent applications must be filed in paper.

A preliminary amendment filed in an application that includes a request for prioritized examination will not result in dismissal of a pending request, or termination of special status if a request has already been granted, so long as the preliminary amendment does not cause the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.

Only the Track One prioritized examination fee, set forth in 37 CFR 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The Track One processing fee, set forth in 37 CFR 1.17(i), will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b).

No. The prioritized examination program permits only a single request to be granted associated with a request for continued examination under 37 C.F.R. 1.114 in that application.

Only the Track One prioritized examination fee, set forth in 37 CFR 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The Track One processing fee, set forth in 37 CFR 1.17(i)(1), will be retained to cover the cost of processing the request. Applicant may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b).

Consult the current fee schedule available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp for the correct fee amounts. The fees required to be paid upon filing for Prioritized Examination for requests for continued examination are:

i. If not previously paid, the applicable publication fee as set forth in 37 CFR 1.18(d). However, since this fee is currently set to $0, no publication fee is due at this time for a request for prioritized examination for continued examination (RCE). The prioritized examination rule still contains the publication fee as a requirement in the event that changes to the publication fee are made in the future.
ii. Prioritized examination processing fee, as set forth in 37 CFR 1.17(i)(1).
iii. Prioritized examination fee set forth in 37 CFR 1.17(c) ($4000.00, or $2000.00 for small entities, or $1000.00 for micro entities).

If any fee is unpaid at the time of filing of the request for prioritized examination, the request for prioritized examination will be dismissed. However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.

Upon filing a proper request for continued examination (which requires prosecution in the application to be closed), prioritized examination becomes available for an application filed as a national stage entry under 35 U.S.C. 371.

Yes. The prioritized examination program permits a single request to be granted upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted upon filing a request for continued examination under 37 CFR 1.114.

The Request for Prioritized Examination must be filed prior to the mailing of a first Office action after the filing of a request for continued examination, and either be filed concurrently with, or subsequently to, the filing of a request for continued examination.

An information disclosure statement (IDS) filed in an application that includes a request for prioritized examination will not result in dismissal of a pending request, or termination of special status if a request has already been granted.

If a signed ADS that provides the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor is present on filing, the inventor's oath or declaration need not be submitted on filing.

The application size fee or an excess claims fee is not required to be present on filing; however, if required, these fees should be paid on filing to avoid any delays in the processing of the Track One request.

An application for which prioritized examination is sought may not contain more than four independent claims, more than thirty total claims, or any multiple dependent claims. If applicant has mistakenly failed to comply with those requirements, applicant will receive a decision on the request for prioritized examination that provides one month to take corrective action. That one month period is not extendable.

Requests for prioritized examination will be acted upon once the application has met all formal requirements such that it is ready for examination. A description of what it means for an application to be in condition for examination is provided at MPEP 708.02, subsection VIII.C. Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice.

A proper request for prioritized examination requires that the application include a specification as prescribed by 35 U.S.C. 112 including claim(s), any required drawings. The application must also include either an executed inventor's oath or declaration under 37 CFR 1.63 or 1.64 for each inventor, or a signed ADS that provides the legal name, mailing address, and residence (if not residing at the mailing address) for each inventor. The application must also include the filing, search, and examination fees, and the prioritized examination fee and the processing fee. Failure to submit these required items on the date of filing will cause the request to be dismissed.

Applicants may, however, receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52, or an English-language specification, or a notice requiring an excess claims fee) that results in the application not being in condition for examination. These other informalities or deficiencies in the application will delay a decision on the request for prioritized examination, but will not cause the request to be dismissed.

Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination (Track One) program. A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.

Yes; however, either (1) the substitute statement and the declaration(s) from the other joint inventor(s) or (2) a signed ADS that provides each inventor's legal name, mailing address, and residence (if the inventor does not reside at the mailing address), must be submitted on the date the application is filed. If the signed ADS is not present upon filing, or the substitute statement is defective for any reason, prioritized examination status will not be granted. For guidance in filing a substitute statement, see Examples 2 and 4 in "Inventor's Oath or Declaration Examples Featuring 'Best Practices' in Use of Inventor's Oath or Declaration Forms."

Yes, a copy of the inventor's oath or declaration from a parent application may be submitted for a continuing application, provided that the inventor's oath or declaration of the earlier-filed application is compliant with current rules for the inventor's oath or declaration. See 37 CFR 1.63(d).

Yes. Although the publication fee set forth in 37 CFR 1.18(d) is required by the rule, this fee currently is $0, so no fee is due. However, if the fee is set to a different amount in the future, that fee amount must be submitted with the request for prioritized examination (along with the other required fees), even though nonpublication is being requested.

No. However, a translation is required in accordance with 37 CFR 1.52(b)(1).

Consult the current fee schedule, available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp, for the correct fee amounts. The fees required to be paid upon filing for Prioritized Examination are:

i. Basic filing fee, as set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c).
ii. Search fee, as set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m).
iii. Examination fee, as set forth in 37 CFR 1.16(o), or for a plant application, 37 CFR 1.16(q).
iv. Publication fee, as set forth in 37 CFR 1.18(d). However, since this fee is currently set to $0, no publication fee is due at this time for a request for prioritized examination. The prioritized examination rule still contains the publication fee as a requirement in the event that changes to the publication fee are made in the future.
v. Track One processing fee, as set forth in 37 CFR 1.17(i)(1).
vi. Track One prioritized examination fee of $4,000.00 ($2,000.00 for small entities, or $1,000.00 for micro entities).

If any of the above fees are unpaid at the time of filing of the application, the Request for Prioritized Examination will be dismissed. However, if an explicit authorization to charge any of the missing fees has been provided in the papers accompanying the application and the request, those fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees. It is recommended that applicant include an authorization to charge any additional fees under 37 CFR §§ 1.16 and 1.17 to ensure that a Track One request is not dismissed for failure to pay the required fees.

Yes. An applicant may file a U.S. application under 35 U.S.C. 111(a), and in that application, claim the benefit of the earlier international application under 35 U.S.C. 365(c), or claim the right of priority of the earlier international application under 35 U.S.C. 365(a), subject to the conditions of 35 U.S.C. 365. Such an application is eligible for prioritized examination. However, an applicant may not request prioritized examination (Track One) of a national stage application (submitted under 35 U.S.C. 371) of an international application.

Yes. Any original utility or plant nonprovisional application filed under 35 U.S.C. 111(a) and claiming priority to a foreign application under 35 U.S.C. 119(a)-(d) or (f) is eligible for prioritized examination.

Contact the person who signed the decision dismissing the request if there is a question about the dismissal. In addition, the Office of Petitions may be contacted about a specific decision dismissing a request for prioritized examination at 571-272-3282. General questions about the prioritized examination program can be directed to the Office of Patent Legal Administration at (571) 272-7704 or at PatentPractice@uspto.gov.

The effective date of prioritized examination for new applications (Track One) is September 26, 2011.

The goal of the USPTO is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted.

Applicant can 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 USPTO in not granting the request before filing such a petition under 37 CFR 1.181.

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111(a), having no more than 4 independent claims, 30 total claims, and no multiple dependent claims, and filed on or after September 26, 2011, are eligible for prioritized examination (Track One). See FAQs labeled PE-Track One below for details.

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111, or having entered the national stage under 35 U.S.C. 371, in which a proper request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for prioritized examination. A proper RCE can only be filed if prosecution in the application is closed (e.g., the last Office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application). See 37 CFR 1.114(b). A request for prioritized examination must be made before an Office action responsive to the RCE has been mailed. See FAQs labeled PE-RCE below for details.

Prioritized examination is a procedure for expedited review of a patent application for an additional fee. The USPTO's goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted. The rule applicable to prioritized examination is 37 C.F.R. § 1.102(e). Prioritized examination of newly filed applications is also known as "Track One" or Track I".

Other - Technical Questions

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 https://www.uspto.gov/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 USPTO's form.

Fees & Payments - Fees – General Information - Patent Help - Technical Questions - Other - Other

For patents, if the owner of the invention qualifies as a small entity or micro entity, the filing, issue, and maintenance fees are reduced by 60 percent or 80 percent, respectively.

No. Patent maintenance fees are only required for maintaining an original or reissue patent, except for a design or plant patent, based on an application filed on or after December 12, 1980.

Information is available on the Patent FAQs page.

Patent Help - Technical Questions - Technical Information - Other

Special characters are only allowed within the Patent Center Application Data screen for the Title of Invention and the Name of the First Inventor. The following characters are only allowed, in addition to all standard keyboard characters, in these two fields:

’,...,’,„¢,“,¸,¡,¢,£,¤,¥,§,©,ª,«,,®,°,±,²,³,µ,¹,º, »,¼,½,¾,¿, €,

If Patent Center becomes unavailable, you may fax follow on documents and payment to the central fax at 571-273-8300 or mail to:

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

New applications cannot be faxed but can be mailed to this address, hand delivered to the USPTO walk-up window. When mailing you may use Express Mail from USPS in accordance with 37 CFR 1.10. Alternative payment methods are listed on the filing documents during an outage page.

No, the fillable form will not adjust the font size.

No. The Accelerated Examination petition is manually processed.

If the inventor has only one name, enter a period into one of the name fields.

Transmittal letters should be indexed as "Miscellaneous Incoming Letter".

Yellow triangles [warning - yellow triangle] indicate that a warning message is associated with the PDF file.

Red inverted triangles [error - red inverted triangle] indicate that an error has been found in the PDF file. You cannot proceed with submission when the red error triangle appears.

The main advantage is that they are auto-loaded meaning that they do not need to be manually processed, which eliminates errors and provides your information to the USPTO in the exact format that you intended. Please note: If you print and scan this document, then it will not be auto-loaded.

The first and last name fields accept up to 50 characters. If a first or last name requires more than 50 characters, enter the first 50 characters.

Fees & Payments - Fees – General Information - Refunds - Patent Help - Technical Questions - Other - Other - Other

No, filing fees are not refundable. The filing fee is not for a patent, but is a statutorily prescribed payment to the USPTO for services rendered in processing a complete application. This statutory fee is due upon filing of the application. For additional information, you may contact the Inventors Assistance Center (IAC).

Patent Help - Technical Questions - Other

Once you have submitted your documents electronically, you will immediately receive an Acknowledgement Receipt, which contains critical information, including a time and date stamp of receipt, a listing of the files/documents associated with your submission, page counts of those files/documents where applicable, an application number and a confirmation number. This electronic receipt may be printed and it carries the security and authority of the Postcard receipt commonly provided in paper-filed applications and returned to you by the United States Patent and Trademark Office acknowledging receipt of your documents.

The USPTO Website contains a link to an editable PDF version of the RO/101 Request Form available at WIPO's website.

A. Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the Office.

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