| General Information |
Referenced Items (160, 161, 162, 163, 164, 165, 166, 167, 168, 169, 170, 171, 172, 173, 174, 175, 176) |
(160) Changes to Pre-Examination Notices
I. Summary
The United States Patent and Trademark Office (USPTO) reviews new
nonprovisional applications filed under 35 U.S.C. § 111(a) and national
stage applications submitted under 35 U.S.C. § 371 to ensure that each
application is complete and in condition for examination. The USPTO also
reviews provisional applications filed under 35 U.S.C. § 111(b) to ensure
that each provisional application is complete. Applicants are notified of
any deficiencies or informalities in new applications through various types
of pre-examination notices. Pre-examination notices that require the
submission of missing items or correction of the application papers set a
time period for reply during which all the requirements must be satisfied.
The USPTO has received feedback from applicants that pre-examination
notices are not always easy to understand and has received requests to
modify the notices for clarity. In response to that feedback, the USPTO
undertook an effort to revise the pre-examination notices. The notices have
now been revised to more clearly set forth the required items and/or the
corrections needed to complete the application and place it in condition
for examination.
Applicants are advised that some changes have also been made to the
notices to create consistency between the practices for nonprovisional
applications filed under 35 U.S.C. § 111(a) and national stage applications
under 35 U.S.C. § 371. As a result, the title of the Notification of
Defective Response in national stage applications under 35 U.S.C. § 371 has
been changed to "Notification of Defective Reply" and the time period for
reply thereto has also changed. Applicants should carefully review any
pre-examination notices received over the coming months to ensure that any
replies in response to such notices are proper and filed in a timely
manner.
II. Detailed Information
The USPTO has made changes to clarify pre-examination notices issued by
the Office of Patent Application Processing (OPAP) (including notices from
the United States Designated/Elected Office (DO/EO/US) for national stage
applications under 35 U.S.C. § 371). The changes will result in notices
that are better tailored to each situation by eliminating unnecessary
generic text that is not applicable, by identifying specific items and
corrections that are required, and by providing further information on how
to comply with each requirement.
The following discussion includes examples of the changes that were made
tothe notices.
Notice of Incomplete Reply: The Notice of Incomplete Reply will now
specify the extensions of time that remain available in the particular
application and provide the last date on which a reply can be timely filed.
In addition, the Notice of Incomplete Reply will now clearly state that the
time period continues to run from the previous notice. Previously, where
the only outstanding requirement was an extension of time, the Notice of
Incomplete Reply listed all extensions of time permitted under the rules
without regard to the time period running in the particular application. In
addition, in most cases, the Notice of Incomplete Reply referred to the two
month time period set forth in the previous notice without expressly
stating that the time period continues to run from the previous notice.
Some applicants misunderstood this language on the Notice of Incomplete
Reply as providing a new two month time period to reply. These changes to
the Notice of Incomplete Reply will make it easier for applicants to
understand the extensions of time that remain available in the particular
application and that the time period continues to run from the mailing date
of the previous notice.
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Notice Regarding Power of Attorney: The Notice Regarding Power of
Attorney will now clearly indicate the specific reason why the power of
attorney cannot be accepted. For example, when a power of attorney is
submitted with a request to change the applicant but the request to change
the applicant cannot be granted because the statement under 37 CFR 3.73(c)
is non-compliant, the notice will specifically indicate the reason why the
power of attorney cannot be accepted. Previously, the notice only stated
that the power of attorney was not signed by the applicant, rather than
pointing out that the reason for rejecting the power of attorney was
related to an improper request to change the applicant. This change in the
Notice Regarding Power of Attorney will clarify what the applicant must
submit in order for a change in power of attorney to be accepted.
Notification of Defective Reply: While undertaking this effort to
improvethe notices issued during the pre-examination process, the USPTO has
discovered some inconsistencies between the practices for nonprovisional
applications filed under 35 U.S.C. § 111(a) and national stage applications
under 35 U.S.C. § 371 and has made changes to these notices for
consistency. Previously, when applicant's response to a Notification of
Missing Requirements was not complete in a national stage application under
35 U.S.C. § 371, the USPTO would issue a Notification of Defective Response
giving applicant an alternative time period for reply of one month from the
date of the Notification of Defective Response or the time remaining in the
Notification of Missing Requirements, whichever was longer, in order to
complete a reply to the Notification of Missing Requirements. In
instances, the USPTO revised its practice of issuing actions or notices
that set an alternative time period of one month or the time remaining in a
previous action or notice, whichever was longer, several years ago.
Therefore, the title of the Notification of Defective Response is being
changed to "Notification of Defective Reply" and the additional one month
time period is being eliminated in order to create consistency with the
practice in applications filed under 35 U.S.C. § 111(a) and to reduce any
confusion that may arise from an alternative time period for reply.
Notice to Comply With Requirements For Patent Applications Containing
Nucleotide Sequence And/Or Amino Acid Sequence Disclosures: A number of
clarifying changes have also been made to the Notice to Comply With
Requirements For Patent Applications Containing Nucleotide Sequence And/Or
Amino Acid Sequence Disclosures. For example, the notice will now provide
more detail regarding sequence listing requirements and how to correct any
deficiencies. As a reminder, applications containing disclosures of
nucleotide and/or amino acid sequences are reviewed in OPAP for compliance
with sequence listing requirements and are retained in OPAP until any
noncompliant sequence listing that renders an application unsuitable for
examination is corrected. OPAP will mail to applicant a Notice to Comply
With Requirements For Patent Applications Containing Nucleotide Sequence
And/Or Amino Acid Sequence Disclosures listing the requirements that have
not been met and setting a two month time period within which to comply
with the sequence rules (37 CFR 1.821 -1.825). Failure to comply with these
requirements will result in abandonment of the application under
37 CFR 1.821(g). Extensions of time may be obtained under the provisions of
37 CFR 1.136. See the Manual of Patent Examining Procedure (MPEP) Section
2421.03.
III. Reminders
Use the Correct Document Descriptions for Correspondence Filed
Electronically: Applicants are reminded that using the correct document
description is important since it will result in a message to the
appropriate area of the USPTO to process the reply. Failure to use the
correct document description may result in no message being sent to anyone
in the USPTO that a reply has been filed. Applicants are advised that
replies to most notices sent by OPAP (e.g., Notice to File Missing Parts,
Notice of Omitted Items, Notice of Incomplete Application, or Notification
of Missing Requirements) submitted electronically via the USPTO's
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electronic filing system (EFS-Web) should be identified using the document
description "Applicant Response to Pre-Exam Formalities Notice." Replies to
notices regarding sequence listing requirements only (e.g., Notice to
Comply With Requirements For Patent Applications Containing Nucleotide
Sequence And/Or Amino Acid Sequence Disclosures) should be identified using
the document description "Response to Pre-Exam Sequence Notice." In
addition, it is noted that use of the document description "Application
Data Sheet" by itself does not result in a message being sent to anyone in
the USPTO that a reply has been filed and needs to be processed. Thus, a
corrected ADS must be filed with an appropriate request to take some
action, such as a request for corrected filing receipt using the document
description "Request for Corrected Filing Receipt," a request under
37 CFR 1.48 using the document description "Request under Rule 48
correcting inventorship," or a request under 37 CFR 1.46(c) using the
document description "Request under 37 CFR 1.46(c) to correct, update or
change the applicant." An indexing guide for document descriptions is
available at https://www.uspto.gov/patents-application-process/applying-
online/efs-web-guidance-and-resources.
All Correspondence Must Be Properly Signed: When submitting
correspondence in an existing application, applicants are reminded that a
properly signed reply or request is required. For example, where only fees
are required, applicant must submit a properly signed reply with the
payment of the fees. All correspondence filed in an application must be
signed in accordance with 37 CFR 1.33(b).
A Substitute Specification is Required for Certain Amendments:
Applicants are reminded that if a reply to a notice sent by OPAP
necessitates changes to the specification (excluding the claims or
abstract), then the notice will require applicant to submit an amendment in
the form of a substitute specification in compliance with 37 CFR 1.121(b)
(3) and 37 CFR 1.125. Such an amendment to the specification cannot be made
by way of replacement paragraph or replacement section under 37 CFR 1.121
(b)(1) or (b)(2). The only format for an amendment to the specification
useable for pre-grant publication purposes is a substitute specification.
See MPEP Section 714.01(e).
IV. Contact Information
Questions regarding a pre-exam notice received in an application filed
under 35 U.S.C. § 111 should be directed to the Application Assistance Unit
at (571) 272-4000. Questions regarding a pre-examination notice received in
a national stage application under 35 U.S.C. § 371 should be directed to
the person listed on the notice or, alternatively, the PCT Help Desk at
(571) 272-4300.
April 16, 2019 ANDREI IANCU
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1462 OG 121]