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Textual
Equivalent of Training Slides entitled "Recent
Patent-Related Rule Making and Changes in USPTO Practice
Philadelphia
IPLA 9/25/03"
Prepared September
25, 2003 by:
Office of Patent Legal Administration (OPLA)
Robert J. Spar, Director
(703) 308-5107
Bob.Spar@USPTO.gov
TOPICS
Recent Rule Making/
Notices:
- Image File Wrapper
(IFW) - Final Rule
- Revised Amendment
Practice
- Elimination
of CPA Practice - Final Rule
- Notice of Foreign
Filing - OG Notice
- Reexamination Guidelines
- OG Notice
- Patent Cooperation
Treaty - Proposed Rule Making
- Clarification
of Power of Attorney Practice, and Revisions to Assignment Rules - Proposed
Rule Making
- Customer Number
Bar Code Labels - OG Notice
- Batch Updates -
OG Notice
- Unity of Invention
Study - OG Notice
Image File Wrapper
(IFW) – Final Rule
Effective date: July
30, 2003
Changes to Implement
Electronic Maintenance of Official Patent Application Records, 1272
Off. Gaz. Pat. Office 197 (July 29, 2003), 68
Fed. Reg. 38611 (June 30, 2003)(final rule) [PDF].
IFW Implementation
The Office is implementing
the Image File Wrapper (IFW) system which is an image technology
system for storage and maintenance of records associated with patent applications.
Paper components
of the application file contents (including the specification, oath or
declaration, drawings, information disclosure statements, amendments,
Office actions, and file jacket notations) of pending applications will
be scanned into the IFW system as electronic image files.
All processing and
examination will be performed with the electronic image files,
instead of paper source documents, by all Office personnel.
The electronic image
files in the IFW system will be the official records of the applications
(the transition started on 6/30/03).
See Notification
of United States Patent and Trademark Office Patent Application Records
being Stored and Processed in Electronic Form, 1271
Off. Gaz. Pat. Office 100 (June 17, 2003).
The image technology
system will replace the standard paper processing of applications.
Electronic Maintenance
of Application Records
Increases the integrity
of the Office records;
Reduces the potential for loss of records and misfiling;
Allows parallel processing of the application by various parts of the
Office; and
Facilitates intra-Office access to an application file and to other
authorized parties.
Applicants may continue
to file applications and correspondence in paper form.
Alternatively, applicants
may use the Office electronic filing system (EFS) for new application
filings and certain information disclosure statement (IDS) submissions.
Copies of U.S.
patents and U.S. patent application publications are not required under
§1.98 if the references are being submitted in an e-IDS.
The Office will supply
copies of U.S. patents and U.S. patent application publications cited
by the examiner to applicants for applications in IFW until the Office
implements a system to permit applicants via Patent Application Information
Retrieval (PAIR) system to access these documents electronically.
Foreign patent documents
and non-patent literature will still be provided.
U.S. patents and
application publications are currently available on the USPTO website
at http://www.uspto.gov/patft/index.html
Applicants may electronically
access their applications in the IFW system via private side of
PAIR.
The contents of published
applications that are in the IFW system will be viewable by the public
through the public side of PAIR in FY04.
The system is consistent
with the data processing system used by the European Patent Office (EPO).
The Office plans to increase information exchange by leveraging common
storage architecture.
The backfile of existing
applications will be scanned, and indexed, into the IFW system.
A schedule for capturing
the backfile of existing applications linked to the movement of art units
to the Office's new location at Carlyle has been established.
When a paper for
an existing application in a designated art unit is recognized, the paper
and the application will be scanned into the IFW system.
By December of 2003,
1,700 examiners (from TCs 1600, 1700 and 2800) are expected to be working
in IFW environment with all their applications scanned into the IFW system.
IFW Rule Making
The Office received
20 written comments from intellectual property organizations, law firms,
and patent practitioners in response to the notice of proposed rulemaking.
The comments are
posted at http://www.uspto.gov/web/offices/pac/dapp/opla/comments/index.html
37 CFR 1.3, 1.59,
and 1.99
The rules have been
revised to eliminate Office's return of certain papers.
As part of the
implementation of IFW, the original paper will be disposed in accordance
with a record retention schedule after scanning.
37 CFR 1.9 and
1.14
Section 1.9, "Definitions",
has been amended to clarify that the word "paper" and "papers"
refer to a document or documents, which may be electronic records or physical
paper sheet(s).
Section 1.14, "Patent
applications preserved in confidence", has been revised to provide
clarity and expand the rule to provide for electronic files.
37 CFR 1.14(a)
Separate paragraphs
in §1.14(a) were established to state what access or information
is available in specific situations:
Patented applications
and statutory invention registrations (SIR). (§1.14(a)(1)(i))
Published abandoned applications. (§1.14(a)(1)(ii))
Published pending applications. (§1.14(a)(1)(iii))
Unpublished abandoned applications (including provisional applications)
that are identified or relied upon. (§1.14(a)(1)(iv))
Unpublished pending applications (including provisional applications)
whose benefit is claimed. (§1.14(a)(1)(v))
Unpublished pending applications (including provisional applications)
that are incorporated by reference, or otherwise identified. (§1.14(a)(1)(vi))
37 CFR 1.14
Request for Access
under 37 CFR 1.14(a)(1)(iv)
Applicants are encouraged
to use Form PTO/SB/68 which has been revised to include explanatory notes
concerning when access is available.
[Alternative text
: Image of Form PTO/SB/68]
37 CFR 1.14(b)
Electronic access
to an application
Where a copy of
the application papers or access to the application is available pursuant
to §§ 1.14(a)(1)(i) through 1.14(a)(1)(vi), the Office may
at its discretion provide access only to an electronic copy of
the file contents of the application.
37 CFR 1.52
Papers must not
be permanently bound
Papers must be readily
separable for scanned entry into the image system.
The use of binder clips or standard office staples will generally be
acceptable.
Each section of a
patent application is required to start on a separate sheet and include
no other portions of the application or other material.
The application
will be electronically scanned and each section of the application (e.g.,
text of the specification, abstract, claims) will be indexed separately
in IFW.
Presentation of other material on same page makes the electronic indexing
of the application more difficult.
37 CFR 1.72
Elimination of the
prohibition on using the abstract to interpret the claims
§1.72(b) has
been amended to delete the last sentence in the rule ("The abstract
will not be used for interpreting the scope of the claims.") to
be consistent with Hill Rom Co. v. Kinetic Concepts, Inc., 209
F.3d 1337, 1341 n.*, 54 USPQ2d 1437, 1440 n.1 (Fed. Cir. 2000).
37 CFR 1.98
Electronic Information
Disclosure Statement (eIDS)
Section 1.98 has
been amended to provide that the requirement for a copy of U.S. patents
and U.S. application publications does not apply to any IDS submitted
electronically in compliance with the Office's EFS. Also see
1262 OG 94 (9/17/02).
Only U.S. patents and application publications may be submitted with
eIDS.
eIDS may be submitted with original application or later.
eIDS may be submitted even where application was not submitted by EFS.
eIDS automatically loads patent citations for Examiner with EAST &
WEST search tools.
Information Disclosure
Statement
Copies of cited U.S.
patents and U.S. application publications are not required for IDS submissions
filed in:
U.S. applications
filed after June 30, 2003; and
International applications
that have entered the national stage under 35 U.S.C. 371 after June
30, 2003.
See Information
Disclosure Statements May Be Filed Without Copies of U.S. Patents and
Published Applications in Patent Applications filed after June 30, 2003,
1273
Off. Gaz. Pat. Office 55
(August 5, 2003). http://www.uspto.gov/web/offices/com/sol/og/2003/week31/patdisc.htm
For applications filed
on or before June 30, 2003, copies of cited U.S. patents and patent application
publications are still required unless the references are submitted in
an eIDS.
Applicants are still
required to submit copies of foreign patent documents and non-patent literature
in accordance with §1.98(a)(2).
Revised Amendment
Practice 37 CFR 1.121
Strict compliance
is mandatory - all amendments filed on or after July 30, 2003 must
comply with the revised 37 CFR 1.121, except amendments to the specification
and claims filed in reissue applications and reexamination proceedings.
A sample amendment
document and Q's and A's are posted on the USPTO's website at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/moreinfoamdtprac.htm
Major Changes from
Notice of Proposed Rule Making :
Only seven status
identifiers are permissible instead of eleven.
The text of withdrawn
claims must be included in the listing of the claims.
Comments on the
NPR suggested supplying text of withdrawn claims for rejoinder purposes.
Applicants may
need to amend withdrawn claims to include limitations added to elected
claims to permit rejoinder.
Drawing changes
may be shown by annotated drawings.
Permissible markings
only include underlining, strikethrough, and double brackets [[ ]].
Note: changes from
NPR are highlighted in bold on the next few slides.
Highlights:
- Each section of
an amendment paper must start on a separate sheet.
For example:
each of the following sections must start on a separate sheet: Introductory
comments, Amendments to the Specification, Amendments to the Claims,
Amendments to Drawings, and Remarks.
- Submit only one
version of the replacement paragraph or section, or currently amended
claims, with markings (i.e., strikethrough, double brackets [[ ]],
or underlining), to show the changes relative to immediate prior version.
The requirement
to provide a separate, clean version has been eliminated, except
when applicant submits a substitute specification.
- When there is
any amendment to a claim, a claim listing of all claims ever
presented in the case must be supplied in ascending numerical order.
An example
of a claim listing is as follows:
Claims 1-5
(canceled)
Claim 6 (previously presented) A bucket with a handle.
Claim 7 (withdrawn) A handle comprising an elongated wire.
Claim 8 (withdrawn) The handle of claim 7[[6]] further comprising
a plastic grip.
Claim 9 (currently amended) A bucket with a green blue
handle.
Claim 10 (original) The bucket of claim 9 wherein the handle is
made of wood.
Claim 11 (canceled)
Claim 12 (not entered)
Claim 13 (new) A bucket with plastic sides and bottom.
Amendments to
Claims
What is a claim listing?
A claim listing
must include:
The claim number
of every claim ever presented in the application, whether entered or
not;
A status identifier, in parentheses, following each claim number;
The text of all pending claims (including withdrawn claims); and
Markings to show the changes made only in the current amendment relative
to immediate prior version.
The claims in the
listing (in the current amendment) will replace all prior versions,
and listings, of claims in the application.
The seven (7) permissible status identifiers and their definitions,
are:
- (Original):
Claim filed with original specification (not added by preliminary amendment
and not previously amended).
- (Currently amended):
Claim being amended in the current amendment. Currently amended claims
must include markings (strikethrough, double brackets, or underlining)
to indicate changes.
- (Canceled):
Claim canceled or deleted in current amendment or previously. Do not
present the text of a canceled claim. Consecutive canceled claims may
be grouped together (e.g., claims 1-5 (canceled)).
- (Withdrawn):
Non-elected claim.
The text of
a withdrawn claim must be presented.
Withdrawn claims that are being currently amended must be presented
with markings (strikethrough, double brackets, or underlining) to
indicate changes.
Example: Claim 8 (withdrawn) The handle of claim 7[[6]] further
comprising a plastic grip.
- (Previously
presented): This is a generic identifier to cover any claim that
was previously added or amended in an earlier amendment paper.
The proposed identifiers
"previously amended" or "previously added" were
not adopted, and must not be used.
- (New): Claim
being added in the current amendment paper. The text of the claim must
be presented in clean form without underlining.
- (Not entered):
Claim presented in a previous unentered amendment.
Do not present
the text of a not entered claim.
Consecutive not entered claims may be grouped together (e.g., Claims
20-25 (not entered)).
If in doubt as to whether a prior amendment was entered, the claim
should be presumed to be "not entered".
The following status
identifiers in NPR have been eliminated:
previously amended,
previously added,
reinstated-formerly claim #_,
previously reinstated,
re-presented-formerly dependent claim #_, and
previously re-presented.
Multiple status
identifiers must not be used for any single claim.
Only claims of
the status "currently amended" and "withdrawn"
(if the withdrawn claims are being currently amended) may include markings.
All other pending
claims (including withdrawn claims that are not being
currently amended) must be presented in clean text (without markings).
Any claim presented
in clean text (no markings) constitutes an assertion that it has not been
changed relative to the immediate prior version, except omitting
markings (i.e., underlining, strikethrough, and double brackets)
and deleted text.
For example,
If the immediate
prior version of the claim was:
"Claim 1 (currently amended) A bucket with a blue handle."
The listing of
claims in the current amendment must have:
"Claim 1 (previously presented) A bucket with a handle."
Canceled claims and not entered claims may only have a "canceled"
or "not entered" status identifier after the claim number. The
text must not be supplied.
Grouping of Claims
- consecutive canceled claims or not entered claims may be aggregated
into one line.
Examples:
Claims 1-5 (canceled)
Claims 20-25 (not entered)
New or added claims
must have "new" as a status identifier
Do not underline
the text of the new claims.
Markings to Show Changes:
The following must
include markings to show all changes relative the immediate prior version:
Replacement paragraphs
or sections,
Replacement abstracts,
Currently amended claims, and
Substitute specifications.
Added text must
be shown by underlining.
Deleted text must
be shown by strikethrough (e.g., strikethrough)
with 2 exceptions.
- For deletion
of five or fewer consecutive characters, double brackets [[ ]]
may be used (e.g., [[eroor]]); and
- If strikethrough
cannot be easily perceived, deleted text must be shown by double
brackets [[ ]] around the deleted text characters.
For example:
changing "4 corners" to "three corners" should
be indicated by "three[[4]] corners".
For changes of punctuation
marks or difficult to perceive characters, applicants may delete text
before and after with strikethrough, and then insert such text along
with the change by underlining. For example:
If the hyphen
in "strike-through" is to be deleted, it may be shown as
"strike-throughstrikethrough"
Amendments to Specification
The location of the
paragraph or section to be deleted or replaced, or where
a new paragraph or section is to be added, must be unambiguously
identified.
The location can
be identified by using a few words at the beginning and/or the end of
the paragraph or section.
Do not underline
the text of a new paragraph or section.
Deletion of
a paragraph or section must only include an instruction to delete, and
the location of the paragraph or section.
Replacement
paragraph or section must be a marked-up version showing the changes.
A clean version of
any replacement paragraph or section must not be submitted in addition
to a marked up version, except when applicant submits a substitute specification.
Amendments to Abstract
An amendment to an
abstract is treated like an amendment to the specification.
If the changes
are minor in nature, submit a replacement abstract with markings
to show all changes relative to the immediate prior version.
If the abstract
is being substantially rewritten, submit a new abstract in clean
text (no markings) accompanied by an instruction for the cancellation
of the previous abstract.
Any new, or replacement,
abstract must be submitted on a separate sheet (37 CFR 1.72).
Substitute Specification
Substitute Specification
under 37 CFR 1.125 requires:
A statement that
the substitute specification includes no new matter.
A specification
with markings to show all the changes relative to the immediate prior
version.
A clean version
(without markings) of the substitute specification.
The requirements
of a marked-up version and a clean version have been retained.
Amendments to Drawings
Amendment to drawings
must include:
Replacement drawing
sheet showing amended figures which include the desired changes,
without markings, on a separate sheet in compliance with §1.84;
and
Explanation of
the changes in the remarks, or preferably, in the drawing amendments
section, of the amendment paper.
Optional unless
required by examiner:
Annotated drawing
sheet - a marked-up copy of the amended figure(s) with annotations
showing the change(s) may be submitted, or required by the examiner.
Replacement drawing
sheet(s) must be identified in top margin as "Replacement Sheet".
Annotated drawing
sheet(s) must be identified in top margin as "Annotated Marked-up
Drawings".
This will avoid
confusion between a replacement sheet and an annotated sheet.
Annotated drawing sheet(s) will not be entered as part of the
official drawing(s) for the application.
The replacement drawing
sheet(s) and annotated drawing sheet(s), if any, should follow the last
page of the amendment paper, as attachment(s).
Proposed drawing
correction process is eliminated.
Replacement drawing
sheet with changes is accepted by examiner, unless otherwise notified
by examiner. No further drawing submission is required.
If not acceptable,
applicants will be notified of any objections or additional requirements.
Any replacement drawing
sheet including amended figures must include all of the figures appearing
on the immediate prior version of the sheet.
The replacement drawing
figure must not be labeled as "amended."
37 CFR 1.173 now
provides for amending drawings in reissue applications in a similar manner.
Deletion of a figure
requires the following:
An instruction
to delete the figure;
A replacement sheet
which does not include the canceled figure, unless no other figure is
on the same sheet as the canceled figure;
Amendment to the
specification to make corresponding changes to the description of the
drawings (e.g., deletion of the description of the canceled figure);
and
If other figures
need to be renumbered, those figures also need to be amended with revised
figure numbers via replacement drawing sheets.
After Final Amendments
Any amendment after
final (§1.116), or amendment filed with a request for continued examination
(RCE) under §1.114, must include markings showing the changes relative
to the last entered amendment.
Do not include
markings to show changes relative to any unentered amendment.
Applicant should
not assume that an after final amendment is entered because after final
amendments are not entered as a matter of right (§1.116).
If applicant has
not received an advisory action, applicant should check via PAIR, or call
the examiner, to determine whether the after final amendment has been
entered before filing another after final amendment or an amendment with
an RCE.
If the advisory action
has indicated that an after final amendment will be entered upon the filing
of an appeal, applicant should assume that the after final amendment is
not entered.
Any subsequent
amendment must include markings showing the changes relative to the
last entered amendment, and not the amendment which the advisory
action indicated will be entered upon the filing of an appeal.
If applicant wishes to file an RCE after filing more than one after final
amendment that has not been entered, applicant is encouraged to file an
amendment with the RCE that includes:
Instructions not
to enter the unentered after final amendments; and
All of the desired
changes, including changes presented in the unentered after final amendments.
The markings must
show changes relative to the last entered amendment.
A claim listing which includes any unentered claims presented using
the status identifier "not entered" (e.g., claims
20-25 (not entered)).
Any new claims must be numbered consecutively beginning with the number
next following the highest numbered claim previously presented (whether
entered or not).
Treatment of Non-Compliant
Amendments
Applicants will be
notified of any amendment paper that is not accepted because the changes
do not comply with revised §1.121.
For preliminary
amendments and replies to non-final Office actions or notices,
A Notice of
Non-Compliant Amendment identifying the problem section(s) will
be mailed; and
A period for reply shall be given; but
Patent term adjustment (PTA) reductions may be incurred. See §1.704(c)(7).
For after-final
amendments,
Non-compliance
will be indicated in an advisory action; and
The time period for reply continues to run from the mailing date of
the final Office action.
See MPEP 714.03 (8th Ed. 1st Rev., Feb. 2003).
The Notice of Non-Compliant
Amendment will identify:
Each section of
the amendment that is not in compliance with 37 CFR 1.121;
Items that are required for compliance; and
The reasons why the section of the amendment fails to comply with 37
CFR 1.121.
In reply to the Notice,
applicants must submit the corrected section of the amendment that
was non-compliant.
Re-submission of
the entire amendment is not required.
The entire section, however, with corrections, must be resubmitted.
The Office will only
enter the sections of the amendment that are in compliance with 37 CFR
1.121.
Example
Non-compliant claim
amendment example:
If an amendment
includes:
(1) amendments to the specification, and
(2) amendments to the claims, including adding new claims 21 - 25,
But the amendments
to the claims were non-compliant,
Because the
claim listing did not include a status identifier for each claim,
A Notice of Non-Compliant Amendment will be mailed.
In reply to the
Notice, applicant must submit a corrected claim listing that
includes a status identifier for each claim.
The new claims 21-25
must be presented with the status identifier of "new" and
the text of the claims not underlined.
Note: the new
claims 21-25 must not be presented with the status identifier of "not
entered" and must not be renumbered as claims 26-30.
A non-compliant
amendment is different than an unentered after final amendment situation.
In the after final situation, the claim numbers of any unentered new
claims may not be re-used.
The Office would
enter:
- The amendments
to the specification from the original amendment paper, and
- The amendments
to the claims that include the corrected claim listing from the paper
filed in reply to the Notice.
International
Applications
The revised amendment
practice under 37 CFR 1.121 does not apply to amendments filed
in the international stage of an international application.
Such amendments
must be in compliance with the Patent Cooperation Treaty (PCT) amendment
procedure (i.e., PCT Articles 19 and 34(2)(b)).
Thus, status identifiers are not to be used during the international
stage.
Amendments filed
in the national stage (pursuant to 35 U.S.C. 371) of an international
application must comply with the revised amendment practice under 37 CFR
1.121.
The status identifier
"original" must only be used for claims that were presented
on or before the international filing date and have not been
modified or canceled.
Information Contacts
Any questions regarding
the submission of amendments pursuant to the revised practice should be
directed to Office of Patent Legal Administration (OPLA):
Call (703) 305-1616,
e-mail to PatentPractice@USPTO.gov,
or
Contact one of the
following Legal Advisors:
Elizabeth Dougherty
(elizabeth.dougherty@uspto.gov)
Eugenia Jones (eugenia.jones@uspto.gov)
Joe Narcavage (joseph.narcavage@uspto.gov)
Elimination of
CPA Practice as to Utility and Plant Applications – Final Rule
Effective date: July
14, 2003
Elimination of Elimination
of Continued Prosecution Application Practice as to Utility and Plant
Patent Applications, 68
Fed. Reg. 32376 (May 30, 2003) [PDF], 1271
Off. Gaz. Pat. Office 143 (June 24, 2003)(final rule).
Elimination of
CPA Practice
Effective July 14,
2003, CPA practice has been eliminated as to utility and plant applications.
Any CPA filed in a
utility or plant application that was filed on/after June 8, 1995 will
be treated as a request for continued examination (RCE) under §1.114.
Note: If the request
for a CPA does not satisfy all of the RCE requirements under §1.114,
the request will be treated as an improper RCE.
Any CPA filed in
a utility or plant application that was filed before June 8, 1995 will
be treated under 37 CFR 1.53(e) as an improper application.
CPA practice remains
in effect for design applications.
Notice of Foreign
Filing
When a notice of foreign
filing is required after a request for nonpublication request was made.
Clarification of
the United States Patent and Trademark Office’s Interpretation of the
Provisions of 35 U.S.C. 122(b)(2)(B)(ii)-(iv), 1272
Off. Gaz. Pat. Office 22 (July 1, 2003).
The notice clarifies
that:
(1) If an applicant
makes a nonpublication request and then rescinds the nonpublication request
before/on the date a counterpart application is filed in an eighteen-month
publication country, the application will be treated as if the nonpublication
request was never made.
(2) If an applicant makes a nonpublication request, subsequently files
a counterpart application in an eighteen-month publication country and
also files a notice of this foreign filing within forty-five days of the
date such counterpart application was filed, the applicant is not required
to rescind the nonpublication request.
(3) If an applicant
makes a nonpublication request and subsequently files a counterpart application
in an eighteen-month publication country before the nonpublication request
is rescinded, the applicant is required to notify the USPTO of the
foreign filing not later than forty-five days after the date such
counterpart application was filed to avoid abandonment of the application
(even if no one recognizes that the application is abandoned).
(4) When an application
is abandoned due to the failure to timely notify the USPTO of the filing
of a counterpart application in an eighteen-month publication country,
applicant's sole remedy to restore the application to pending status
is by filing a petition under 37 CFR 1.137(b) to revive the abandoned
application.
(5) Applicants should
also provide a notice of foreign filing when rescinding a nonpublication
request in anticipation of filing a counterpart application in an eighteen-month
publication country because no benefit is given to a certificate of mailing
or transmission under 37 CFR 1.8 on a rescission of a nonpublication request
in determining whether applicant has rescinded the nonpublication request
before or on the date a counterpart application is filed in an eighteen-month
publication country.
(6) Applicants may
use USPTO form PTO/SB/36
[PDF] (revision April 2001 or later) to both rescind
a nonpublication request and provide notice of foreign filing.
Reexamination Guidelines
Effective Date: November
2, 2003
Revised Guidelines
for Usage of Previously Cited/Considered Prior Art In Reexamination Proceedings,
1272
Off. Gaz. Pat. Office 24 (July 1, 2003).
This notice sets forth reexamination policy and practice now in effect
as a result of the revision of the reexamination statute made by the Public
Law 107-273 (2002), which, in effect, overruled In re Portola, 100 F.3d
786, 42 USPQ2d 1295 (Fed. Cir. 1997). See In re Robert T. Bass, 65 USPQ2d
1156, 1157 (Fed. Cir. 1997).
Permits reexamination
on the basis of prior art that was previously cited by or to, or considered
by, the USPTO.
In any reexamination
ordered on or after November 2, 2002 (the effective date of the statutory
revision), reliance on old art does not necessarily preclude the existence
of a substantial new question of patentability that is based exclusively
on that old art.
Patent Cooperation
Treaty
January 2004 Revision
of Patent Cooperation Treaty Application Procedure; proposed rulemaking,
68
Fed. Reg. 32441 (May 30, 2003) [PDF], 1271
Off. Gaz. Pat Office 147 (June 24, 2003).
Final Rule expected
to be published in early November 2003
PCT Reform - Background
PCT Assembly Actions:
September 2001,
adopted change in Article 22(1) time limit from 20 to 30 months
September 2002,
adopted proposals as recommended by the PCT Reform Committee
- Expanded International
Search including the issuance of an International Search Opinion
- Automatic designation
and election of contracting parties
- Simplified fee
system with a "flat" international filing fee
- Implementation
of a "communication on request" system
- Relaxation of
signature and other requirements for filing
- Provide reinstatement
procedure in accordance with the PLT
30-Month Article
22 Time Limit
Modification of
Treaty itself
Increased time limit
under Article 22(1) for national phase entry under Chapter I from 20
to 30 months (same as for Chapter II)
Entered into force,
in general, on 01 April 2002
Applies to applications for which the 20-month time limit had not yet
expired on 01 April 2002, and for which the acts necessary to enter
the national phase had not yet been performed
Expanded Search
Procedure
When establishing
the International Search Report, the ISA will also establish a Written
Opinion
ISA Written Opinion,
in most instances, to be adopted by the IPEA as the first Examination
Written Opinion
If no Demand is
filed the ISA Written Opinion will be issued at 30 months as a report
with equal status to the IPER
Automatic Designation
/ Election
The filing of an
International Application will constitute:
A designation
of all contracting States
An indication of all types of protection
An indication of both national and regional filing
Similarly, filing
of a Demand will constitute the election of all designated States
Designation/Election
- Impact
All applications
will now require naming of applicant/inventors
Additional possible
RO workload issues related to missing applicant/inventor information
and signatures addressed by other reform initiatives
RO workload reductions
due to elimination of precautionary designations
IPEA workload reductions
due to elimination of later elections
Fee Structure
With the elimination
of separate designations there is no longer a need for the current multiple
filing fee system (i.e., Basic Fee + Designation Fees)
Fee system therefore
simplified via a single "flat" international filing fee
Filing Requirements
Identifying information
(i.e., address, residence, and nationality) for only one applicant required
to avoid the Article 14 sanction of withdrawal
Applicant must
be entitled to file in that RO
Only the signature
of one applicant required to avoid withdrawal
Offices and Authorities
may waive the requirement for a Power of Attorney
Power of Attorney
requirement may not be waived in the case of applicant initiated withdrawals
National Offices
may still require identifying information and signatures
National Stage
Reinstatement
In accordance with
the PLT, PCT Regulations will provide for reinstatement of National
Stage rights in applications where the 30-month deadline has been missed
Offices will be
able to apply either a due care or an unintentional standard
If contrary to their
national law, Offices will be able to take a reservation to this provision
National Stage
Reinstatement - Impact
Initial impact expected
to be minimal as reservation clause will maintain the status quo
Offices which already
have reinstatement (e.g., U.S. revival practice) will continue
Offices without
will take reservation until such time as their national laws can be
amended
PCT Proposed
Fees
Transmittal fee: $300.00
Search fee-
corresponding
§ 111(a): $300.00
no corresponding § 111(a): $1,000.00
Per additional invention: $1,000.00
Preliminary examination
fee-
USPTO was ISA:
$600.00
USPTO not ISA: $750.00
Per additional invention: $600.00
Power of Attorney
Practice and Assignment Rules - Notice of Proposed Rule Making
Clarification of
Power of Attorney Practice, and Revisions to Assignment Rules, 66
Fed. Reg. 38258 (June 27, 2003) [PDF], 1272
OG 181 (July 29, 2003)(proposed rule).
Available on the
USPTO web site at: http://www.uspto.gov/web/offices/com/sol/og/2003/week30/patclar.htm
No public hearings
are scheduled.
Power of Attorney
Practice and Assignment Rules
Significant Changes
Being Proposed
The terms "power
of attorney" and "Customer Number" are defined. Power of
attorney to specific attorneys limited to ten, or fewer.
If power of attorney
is to be given to more than ten registered practitioners, applicants must
use the Office's Customer Number practice. (37 CFR § 1.32)
The "associate"
power of attorney practice will be discontinued. (37 CFR § 1.34)
Only copies of assignment
documents may be submitted. Original assignment documents will no longer
be returned to applicants/patentees. (37 CFR § 3.24)
Customer Number
Practice
MPEP 403 (8th Ed. 2001) (Rev. 1, Feb 2003)
Customer Numbers (previously
"Payor Numbers") may be used to:
Submit a list
of practitioners by Customer Number such that an applicant or an
assignee may in a Power of Attorney appoint those practitioners associated
with the Customer Number;
Designate the correspondence
address of a patent application by a Customer Number such that the
correspondence address for the patent application would be the address
associated with the Customer Number; and
Designate the fee
address ( 37 CFR 1.363) of a patent by a Customer Number such that
the fee address for the patent (for maintenance fee notices) would be
the address associated with the Customer Number.
Applicants may not appoint more than one Customer Number for
a particular purpose (e.g., correspondence address).
Applicants cannot
give a power of attorney to both practitioners associated with a Customer
Number and to a list of practitioners.
See MPEP §
403 for more information.
Customer Number
Bar Code Labels
Customer Number Bar
Code Labels and Papers with Shaded Portions will No Longer be Permitted
in Correspondence for Patent Applications (signed July 15, 2003)
Available on the USPTO
website at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/barcodes.htm
Customer Number
Bar Code Labels and Papers with Shaded Portions will No Longer be Permitted
Customer Number Bar
code Labels will no longer be permitted to be used in any correspondence
to the Office.
Bar code readers
cannot read the bar code on the label when it is displayed on a computer
monitor for processing IFW applications.
Gray (non-white) backgrounds
on forms or correspondence are no longer permitted.
The text on a gray
(non-white) backgound may be illegible after scanning.
Clear labels are permitted
if the Customer Number is in Arabic numerals (e.g., 10203) and
is legible.
Questions should be
directed to Karin Ferriter at (703) 308-6906 or to PatentPractice@uspto.gov.
Batch Updates
Notice of Elimination
of Batch Update Practice to Change Power of Attorney, 1272
Off. Gaz. Pat. Office 24 (July 1, 2003)
Effective June 5,
2003, the ability to use a "batch update" to change powers of
attorney has been discontinued.
Individual power
of attorney changes must be filed in each application!
The ability to use
the batch update process for making changes in the correspondence address
and the fee address in patent applications will continue to be
permitted.
The practitioners associated with a customer number may still be changed
by filing a request or form PTO/SB/124 [PDF].
Questions regarding
batch updates or Customer Number practice should be directed to the Electronic
Business Center by telephone to 866-217-9197 (toll-free), 703-305-3028,
703-308-6845 or by e-mail to ebc@uspto.gov.
Unity of Invention
Study
Request for Comments
on the Study of the Changes Needed To Implement a Unity of Invention
Standard
in the United States, 68
Fed. Reg. 27536 (May 30, 2003) [PDF], 1271
Off. Gaz. Pat. Office 98 (June 17, 2003).
Currently evaluating
comments received and preparing Green Paper
Key Milestones in
21st Century Plan
November 2003: Publish
paper (Green Paper) on options/proposals and business impact analysis.
January 2004: Hold public hearings on Unity options outlined in the
Green Paper.
April 2004: Publish final report (White Paper) on implementation of
Unity of Invention Standard.
May 2004: Draft necessary legislation.
Issues for Comment
Issue 1: Should
the USPTO study ways to adopt EPO claim treatment practice, including
normally allowing only one independent claim per category of invention,
when considering ways to adopt a Unity of Invention standard?
Issue 2: If
the USPTO adopts a Unity of Invention standard, should the USPTO provide
applicants the option of a PCT-style Unity of Invention practice to pay
for examination of additional inventions that lack Unity of Invention
in the same application?
Issue 3: Should
the USPTO adopt, for national applications, the practice used currently
under the PCT of examining the first claimed invention where there is
a holding of lack of Unity of Invention?
Issue 4: When
adopting the Unity of Invention standard, should the USPTO follow the
EPO practice of performing only a "partial search" if the examination
of the entire scope of the claims is unduly burdensome due to non-prior
art issues?
Issue 5: Assuming
that there will be extra costs of examination under Unity of Invention,
which fees (e.g., filing fee, issue fee, and maintenance fee) should
be increased to recover the extra costs?
Issue 6: How
should work be assigned to ensure that examination quality would not suffer
if examiners have to examine multiple inventions from different disciplines
in a single application?
Issue 7: Should
the USPTO consider using its request for continued examination or RCE
authority under 35 U.S.C. 132(b) to permit applicants after prosecution
has been closed on a first invention to pay an RCE fee and submit or rejoin
claims to additional inventions that either depend from or otherwise include
all of the limitations of the allowed claims?
Issue 8: Should
the USPTO consider using its request for continued examination or RCE
authority under 35 U.S.C. 132(b) to permit requests that the USPTO continue
examination of claims which were withdrawn for consideration (rather than
file a divisional application)?
Issue 9: Should
the USPTO consider:
- seeking a change
to 35 U.S.C. 121 to adopt a Unity of Invention standard;
- maintaining the
current restriction practice in the USPTO; and
- modifying the
USPTO rules and procedures to adopt aspects of Unity of Invention practice
without making any statutory changes
Issue 10: Are
there other solutions which have not been addressed in the request for
comments?
Check the USPTO web site for important announcements
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Revised Amendment Practice Web Page
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Recent Patent-Related
Notices
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Information Contacts
Office of Patent Legal
Administration – (703) 305-1616 or e-mail to PatentPractice@USPTO.gov
IFW – Final Rule –
Jay Lucas (703) 308-6868, Robert Clarke (703) 305-9177, or Robert Spar
(703) 308-5107
Amendment Practice
– Elizabeth Dougherty (703) 306-3156, Eugenia Jones (703) 306-5586, or
Joe Narcavage (703) 305-1795
Access under 37 CFR
1.14 – Karin Ferriter (703) 306-3159, or Michael Lewis (703) 305-5585
Power of Attorney
and Assignment (NPR) – Karin Ferriter (703) 306-3159
Reexamination- Jerry
Dost (703) 305-8610 or Ken Schor (703) 308-6710
Reissue- Joe Narcavage
(703) 305-1795
Electronic Filing,
CDs - Michael Lewis (703) 305-5585 or Jay Lucas (703) 308-6868
Comments on Unity
Study - Robert Clarke (703) 305-9177
Elimination of CPA
Practice - Eugenia Jones (703) 306-5586
Notice of Foreign
Filing - Joni Chang (703) 308-3858 or Mark Polutta (703) 308-8122
Customer Number and
Bar Code Labels - Karin Ferriter (703) 306-3159
Batch Updates - Karin
Ferriter (703) 306-3159
PCT Application Procedure
- Richard R. Cole (703) 305-6639
Thank You
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