Patent FAQs

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

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 If the assignee data is recorded with the Assignment branch only, the information will not be published.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.

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

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

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

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

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

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

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

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

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

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

No.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Yes, both versions should be scanned into IFW.

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

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

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

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

(1) Strikethrough and underlining the whole formula.

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

(2) Doublebrackets and underlining the whole formula.

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

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

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

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

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

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

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

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

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

For example: Application is filed on August 1, 2009, and the Office mails a first non-final Office action on October 1, 2010. One of the inventors is in an area of Japan affected by the earthquake and/or tsunami on March 11, 2011. On March 24, 2011, applicant mails a copy of the form PTO/SB/425 requesting that the Office action mailed on October 1, 2010, be reissued pursuant to the OG notice. The need for the reissuance of the Office action is due to the effects of the earthquake and/or tsunami. On March 27, 2011, the Office reissues (e.g., remails) the non-final Office action and restarts the three month period for reply.

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

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

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

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

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

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

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

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

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

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

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

Yes.

Yes.

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

No. An applicant may simply submit the certification and request form (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.

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

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

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

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

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

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

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

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

Introduction

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

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

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

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

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

Answer to Example A:

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

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

Answer to Example B:

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

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

Answer to Example C:

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

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

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

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

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

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

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

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

The 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).

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

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

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

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

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

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

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

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

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

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

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

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

Note:

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

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

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

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

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

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

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

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

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

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

No, because the USPTO is not charged with administering provisional rights.

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

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

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

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

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

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

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

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

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

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

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

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

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

Go to http://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).

Go to http://www.uspto.gov/web/offices/dcom/olia/aipa/forms.htm for the following forms.

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

Go to http://www.uspto.gov/web/forms/index.xml for these and other USPTO forms. Go to http://www.uspto.gov/web/forms/qas.html for frequently asked questions about USPTO forms.

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

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

In this situation, you will need to file a petition to revive an abandoned application for failure to timely pay the publication fee under 37 CFR 1.137(b). See MPEP 711.03(c), pages 700-140 and 700-141 (August 2001). You may use the form PTO/SB/64 [PDF] available on the USPTO web site at http://www.uspto.gov/web/forms/sb0064.pdf [PDF] . The petition must accompanied by: (1) the petition fee as set forth in 37 CFR 1.17(m); (2) the publication fee; a complete reply to the notice (i.e., the issue fee, corrected drawing, etc.); and (3) a statement that the entire delay in filing the reply and/or fee(s) from the due date until the filing of a grantable petition was unintentional. In addition, if a complete reply to the Notice of Allowance was not filed (e.g., if the issue fee was also not paid, and any drawings, declaration, or biological deposit was not filed), then a complete reply to the Notice of Allowance must also be filed. The petition and an authorization to charge the fees to a deposit account or credit card may be faxed to the Office of Petitions (703) 308-6916.

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

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

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

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

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

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

A request for non-publication will not be recognized unless it is conspicuous. See 37 CFR 1.213(a)(2). Providing text as one paragraph among numerous other paragraphs with no highlighting of the request for non-publication is not conspicuous, and thus the Office's assignment of a publication date was appropriate. To avoid publication you may expressly abandon the application, and file a new application under 37 CFR 1.53(b), claiming priority to the earlier-filed application, with a "Nonpublication Request under 35 U.S.C. 122(b)(2)(B)(i)" (posted at http://www.uspto.gov/web/forms/sb0035.pdf [PDF] ) or make the request and certification in a similarly conspicuous manner when filing the patent application. If your application has been assigned a publication date within the next one to six months, you should consider filing a petition for express abandonment under 37 CFR 1.138(c). If your application has been assigned a publication date within the next four weeks, then it is too late to avoid publication of the application. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final Rule, 65 Fed. Reg. 57024, 57034, Sep. 20, 2000, 1239 Off. Gaz. Pat. Office 63, 73 (October 10, 2000) . Applicant would have a similar remedy in other situations where the request is not conspicuous, for example, where the request is in the specification of the application, on a fee transmittal sheet, or buried in the transmittal letter.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Any request for an early publication must be accompanied by the publication fee set forth in 37 CFR 1.18(d) (currently $300). The applicant must submit a copy of the application in compliance with the Electronic Filing System (EFS) requirements in 37 CFR 1.215(c) or the 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.

If the CPA is filed on or after 11/29/00 in an application that is eligible for the CPA practice, the Office will publish the content of the original filed prior application promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code. For example, if the prior application has no benefit claim, the application will be published after 18 months from the filing date of the prior application.

If the CPA is filed before 11/29/00 or filed in an application that is not eligible for the CPA practice, the application will not be published.

See questions A18, A19, and A20 for restrictions on the CPA practice, treatment of improper CPA, and the differences between a request for continued examination (RCE) and a CPA.

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 the domestic priority/continuity information is included in an application data sheet, such information is not required to be included in the first sentence of the specification following the title. The domestic priority/continuity information will be printed on the front page, but not in the specification of the application publication and the patent, unless such information was also provided by the applicant in the first sentence of the specification following the title.

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).

The shortened named "CREATE" is from the first initial of each word in the title of the Act with the second word "Research" contributing the second letter in addition to the first letter. See the underlined letters as follows: The C ooperative Research a nd T echnology E nhancement Act of 2004.

Applicant need not provide a disclosure of the JRA ( e.g. , by making an amendment to the specification as set forth in 1.71(g)(1)) if the applicant is not invoking the benefit of the CREATE Act. Even though the disclosure of the JRA itself is not required, applicant must still disclosure material prior art in compliance with 37 CFR 1.56, including prior art that could be avoided by invoking the CREATE Act.

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).

Yes, the subject matter that is sought to be disqualified must be made by, or on behalf of, at least one of the parties to the joint research agreement.

To overcome a rejection under 35 U.S.C. 103(a) via the CREATE Act, the applicant must provide a statement to the effect that the disqualified subject matter and the claimed invention were made by or on the behalf of parties to a joint research agreement within the meaning of 35 U.S.C. 103(c)(3), that the joint research agreement was in effect on or before the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement should be or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c)). Evidence to support the statement is not required, except in the very rare circumstance that a patent examiner has independent evidence that casts doubt on the accuracy of the statement. Patent examiners should review the statement to make sure all the requirements are present.

The requirement for signature for the statement is now the same as for any other correspondence as set forth in § 1.33(b). Therefore, a registered practitioner will be allowed to sign the statement in accordance with § 1.33.

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, only the claimed invention that is seeking benefit of the CREATE Act must be made on or after the execution of the joint research agreement and within the scope of the joint research agreement. The subject matter, which is sought to be disqualified, may have a prior art date prior to the execution of the joint research agreement or may not be within the scope of the joint research agreement.

The amendment to 35 U.S.C. 103(c) made by the AIPA is effective for applications filed on or after November 29, 1999. For the National Stage (35 U.S.C. 371) of International Applications, the international filing date must be on or after November 29, 1999 in order for applicant to invoke the exclusion of prior art under 35 U.S.C. 103(c) as amended by the AIPA. The date the applicant fulfilled the requirements of 35 U.S.C. 371(c)(1), (2) and (4) is not relevant in determining whether the application is entitled to the prior art exclusion under 35 U.S.C. 103(c) as amended by the AIPA. If a continuing application is filed after November 29, 1999, and claims the benefit of the prior international application filed prior to November 29, 1999, such continuing application would be entitled to revised exclusion provided in 35 USC 103(c). See "Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term "Original Application" in the American Inventors Protection Act of 1999," Notice, 1233 OG 54 (April 11, 2000) and "Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 USC 103(c)," Notice, 1241 OG 96 (Dec. 26, 2000).

Some contents linked to on this page require a plug-in for PDF Files.

To disqualify a reference under 35 U.S.C. 103(c), applicant needs to supply evidence that the invention described in the application for patent and the invention described in the "prior art" reference applied against the application were commonly owed by, or subject to an obligation of assignment to, the same person, at the time the invention in the application for patent was made. The time requirement "at the time the invention was made" is required by statute. See 35 U.S.C. 103(c).

Applications and references will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, at the time the invention was made, if the applicant(s) or an attorney or agent of record makes a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. Thus, a statement, by itself, will be sufficient evidence. For a more detailed explanation, see the "Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 U.S.C. 103(c)," 1241 OG 96 (Dec. 26, 2000).

Former 35 U.S.C. 103(c) was redesignated as 35 U.S.C. 103(c)(1) with no substantial change to the text. In addition, new subsections 35 U.S.C. 103(c)(2) and (3) were established to create provisions to allow certain prior art to be disqualified under 35 U.S.C. 103(c)(1) based on a joint research agreement.

The CREATE Act was enacted on December 10, 2004, and is effective for all patents, including reissued patents, granted on or after the enactment date. In other words, it is effective for all patent applications pending on or after December 10, 2004. The CREATE Act also effectively makes the 1999 amendment to 35 U.S.C. 103(c) applicable to any applications filed prior to November 29, 1999 and were pending on December 10, 2004. The 1999 amendment to 35 U.S.C. 103(c) added certain commonly owned or assigned prior art under 35 U.S.C. 102(e) to the prior art under 35 U.S.C. 102(f) and (g) that can be disqualified under 35 U.S.C. 103(c). For the 1999 amendment, see § 4807 of the American Inventors Protection Act of 1999 ( see Pub. L. 106-113, 113 Stat. 1501, 1501A-591 (1999)).

Because the CREATE Act applies only to patents granted on or after December 10, 2004, the recapture doctrine may prevent the presentation of claims in reissue applications that had been amended or cancelled (e.g., to avoid a rejection under 35 U.S.C. 103(a) based upon subject matter that may now be disqualified under the CREATE Act) during the prosecution of the application which resulted in the patent being issued. See H.R. Rep. No. 108-425, at 6-7 (2003). The CREATE Act also applies to all reexamination proceedings in which the patent being reexamined was granted on or after December 10, 2004.

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.

The revisions to 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 completely replaced the corresponding AIPA versions and are retroactively effective to the effective date of the AIPA amendments to 35 U.S.C. 102(e) and 374 (November 29, 2000). The following briefly summarizes the major differences:

1. Revised 35 U.S.C. 102(e) (Pub. L. 107-273) generally accords the same prior art date to references of the same application whether it was published as a US patent, a US patent application publication or a WIPO publication. There are limited situations where the US patent may have a different prior art date under 35 U.S.C. 102(e) than the corresponding US patent application publication or a WIPO publication. For example, when the application is based directly on the national stage (35 U.S.C. 371) of an International Application (IA) filed prior to November 29, 2000, however, the US patent has a different 35 U.S.C. 102(e) date for prior art purposes (the 35 U.S.C. 371 date) than the US application publication or the WIPO publication (no 102(e) date). Under the AIPA (prior to the Technical Amendments Act), a US patent application publication of an application could have a much earlier 35 U.S.C. 102(e) date than the corresponding US patent of that same application. This resulted from that fact that the prior art date under 35 U.S.C. 102(e) for US patent application publications could be the international filing dates (even prior to 11/29/00) if certain conditions were met, but US patents could never be prior art under 35 U.S.C. 102(e) as of the international filing date.
2. Revised 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 are applicable to all applications under examination, no matter when filed and all US patents under reexamination or being contested. 35 U.S.C. 102(e) and 374 per the AIPA (prior to the Technical Amendments Act) were only applicable to certain applications, e.g., those filed on or after November 29, 2000 or voluntarily published under 35 U.S.C. 122(b).
3. Revised 35 U.S.C. 102(e) per Pub. L. 107-273 is applicable to all international applications filed on or after 11/29/00 (it does not require national stage entry in the United States). 35 U.S.C. 102(e) per AIPA (prior to Technical Amendments Act) required entry into the national stage in order to be applicable.

Yes, see Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term "Original Application" in the American Inventors Protection Act of 1999, Notice, 1233 OG 54 (April 11, 2000).

The Office stopped printing the 102(e) dates on patents with the issue of May 28, 2002.

In most situations, the 35 U.S.C. 102(e) dates printed on patents are accurate ( e.g. , a patent issued from the national stage of an international application filed before 11/29/00). In a few situations, the printed 35 U.S.C. 102(e) dates may not be accurate because the 35 U.S.C. 102(e) dates printed on patents are based on the entry date of the national stage and not the international filing date (e.g., a patent issued from the national stage of an international application filed on or after 11/29/00). A US patent issued from an international application filed on or after 11/29/00 may have a 35 U.S.C. 102(e) date as of the international filing date or none under the amended 35 U.S.C. 102(e). See Flowchart I [PDF] .

Currently, theres no such plan.

No. 35 U.S.C. 102(e) and 374, as amended by American Inventors Protection Act of 1999 (AIPA) (Pub. L. 106-113) and as further amended by Technical Amendments Act of 2002 (Pub. L. 107-273), is applicable to the WIPO publication of the IA. 35 U.S.C. 102(e), in combination with 35 U.S.C. 374, clearly state that the WIPO publication of an IA only receives a 35 U.S.C. 102(e) prior art date if the IA is published under PCT Article 21(2) in English and designated the United States. Therefore, the IA must have been: 1) filed on or after November 29, 2000, 2) published by the WIPO pursuant to PCT Article 21(2) in English, and 3) designated the United States in order for the WIPO publication to be available as prior art under 35 U.S.C. 102(e). Any filing of an English translation will not be effective in obtaining a 35 U.S.C. 102(e) prior art date for the publication of the IA published by the WIPO in a language other than English.

Yes, the Technical Amendments Act (Pub. L. 107-273) did not amend 35 U.S.C. 103(c).

No, 37 CFR 1.97(e)(2) requires no item of information contained in the IDS was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, no item of information contained in the IDS was known to any individual designated in 37 CFR 1.56(c) more than 3 months prior to the filing of the statement.

Yes, the examiner may withdraw the application from issue with the approval of the Technology Center Director and in accordance with the procedures set forth in section 1308 of the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001).

Yes, a reexamination based on a patent or printed publication that was previously considered by the Office is no longer subject to the Portola bar pursuant to 35 U.S.C. 303(a) and 312(a) as amended by the Patent and Trademark Office Authorization Act of 2002 (Pub. L. 107-273).

The Intellectual Property and High Technology Technical Amendments Act of 2002 (Technical Amendments Act), which contains the revisions to 35 U.S.C. 102(e) and 374, is part of the Public Law 107-273 entitled "21st Century Department of Justice Appropriations Authorization Act." The revisions to 35 U.S.C. 102(e) and 374, and the effective date provisions, are in section 13205. The text of the Act can be located at the Library of Congress website at http://thomas.loc.gov/home/thomas.html or the Government Printing Office's website at http://www.access.gpo.gov/nara/publaw/107publ.html .

Yes. 35 U.S.C. 102(e), as amended by the Technical Amendments Act, must be applied to all patent applications no matter when filed . In other words, the revised statute applies to patent applications filed prior to the effective date of November 29, 2000 as well as to patent applications filed on or after November 29, 2000. Additionally, the revised 35 U.S.C. 102(e) applies to all patents under reexamination or other proceedings challenging the patent. One of the reasons for the Technical Amendments Act was to provide for application of the revised statute to all patent applications, regardless of the filing date, and all patents.

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.

The date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled ( e.g. , the 371(c) date) is not, and never was, a US filing date even prior to the AIPA revision to 35 U.S.C. 102(e). Prior to the amendments to 35 U.S.C. 102(e) by the American Inventors Protections Act of 1999 (AIPA), 35 U.S.C. 102(e) (e.g., pre-AIPA 102(e)) simply equated the 371(c) fulfillment date to a US filing date for prior art purposes. Although the USPTO uses the 371(c) date like a US filing date for processing purposes (and even indicates the 371(c) date as the US filing date on the official filing receipt), legally the 371(c) date was never considered to be a US filing date. The national stage application continues to be considered filed on the international filing date for all purposes except as provided in 37 U.S.C. 102(e). See the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001), section 1893.03(b).

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.

No. This is a matter between you and your patent attorney or agent in which the U.S. Patent and Trademark 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) U. S. Patent and Trademark Office prosecution.