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September 25, 20031 Recent Patent-Related Rule Making and Changes in USPTO Practice Philadelphia IPLA 9/25/03 Bob Spar Director Office of Patent Legal.

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Presentation on theme: "September 25, 20031 Recent Patent-Related Rule Making and Changes in USPTO Practice Philadelphia IPLA 9/25/03 Bob Spar Director Office of Patent Legal."— Presentation transcript:

1 September 25, Recent Patent-Related Rule Making and Changes in USPTO Practice Philadelphia IPLA 9/25/03 Bob Spar Director Office of Patent Legal Administration (OPLA) (703) ,

2 September 25, TOPICS Recent Rule Making/ Notices: 1.Image File Wrapper (IFW) – Final Rule Revised Amendment Practice 2.Elimination of CPA Practice – Final Rule 3.Notice of Foreign Filing – OG Notice 4.Reexamination Guidelines – OG Notice 5.Patent Cooperation Treaty - Proposed Rule Making 6.Clarification of Power of Attorney Practice, and Revisions to Assignment Rules – Proposed Rule Making 7.Customer Number Bar Code Labels – OG Notice 8.Batch Updates – OG Notice 9.Unity of Invention Study – OG Notice

3 September 25, 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 (June 30, 2003)(final rule).

4 September 25, The Office is implementing the Image File Wrapper (IFW) system which is an image technology system for storage and maintenance of records associated with patent applications. Paper components of the application file contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications will be scanned into the IFW system as electronic image files. All processing and examination will be performed with the electronic image files, instead of paper source documents, by all Office personnel. IFW Implementation

5 September 25, The electronic image files in the IFW system will be the official records of the applications (the transition started on 6/30/03). See Notification of United States Patent and Trademark Office Patent Application Records being Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17, 2003). The image technology system will replace the standard paper processing of applications. IFW Implementation (Continued)

6 September 25, 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 Facilitate intra-Office access to an application file and to other authorized parties. IFW Implementation (Continued)

7 September 25, 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. IFW Implementation (Continued)

8 September 25, 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 IFW Implementation (Continued)

9 September 25, 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. IFW Implementation (Continued)

10 September 25, 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 Implementation (Continued)

11 September 25, 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 a/comments/index.html IFW Rule Making

12 September 25, 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 1.3, 1.59, and 1.99

13 September 25, 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 1.9 and 1.14

14 September 25, 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(a)

15 September 25, 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. 37 CFR 1.14

16 September 25, 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 1.14(b)

17 September 25, 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. 37 CFR 1.52

18 September 25, 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 1.52

19 September 25, 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 1.72

20 September 25, 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. 37 CFR 1.98

21 September 25, 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, 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). sc.htm

22 September 25, IDS (Continued) 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).

23 September 25, Revised Amendment Practice 37 CFR 1.121

24 September 25, 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 eognotice/moreinfoamdtprac.htm Revised Amendment Practice

25 September 25, 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. Revised Amendment Practice (Continued)

26 September 25, Highlights: 1.Each section of an amendment paper must start on a separate sheet. For example: each of the following sections must start on a separate sheet: Introductory comments, Amendments to the Specification, Amendments to the Claims, Amendments to Drawings, and Remarks. 2.Submit only one version of the replacement paragraph or section, or currently amended claims, with markings (i.e., strikethrough, double brackets [[ ]], or underlining), to show the changes relative to immediate prior version. The requirement to provide a separate, clean version has been eliminated, except when applicant submits a substitute specification. Revised Amendment Practice (Continued)

27 September 25, 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

28 September 25, What is a claim listing? A claim listing must include: The claim number of every claim ever presented in the application, whether entered or not; A status identifier, in parentheses, following each claim number; The text of all pending claims (including withdrawn claims); and Markings to show the changes made only in the current amendment relative to immediate prior version. The claims in the listing (in the current amendment) will replace all prior versions, and listings, of claims in the application. Amendments to Claims (Continued)

29 September 25, The seven (7) permissible status identifiers and their definitions, are: 1.(Original): Claim filed with original specification (not added by preliminary amendment and not previously amended). 2.(Currently amended): Claim being amended in the current amendment. Currently amended claims must include markings (strikethrough, double brackets, or underlining) to indicate changes. 3.(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)). Amendments to Claims (Continued)

30 September 25, Seven (7) permissible status identifiers (cont.): 4.(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. 5.(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. Amendments to Claims (Continued)

31 September 25, Seven (7) permissible status identifiers (cont.): 6.(New): Claim being added in the current amendment paper. The text of the claim must be presented in clean form without underlining. 7.(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 (not entered)). If in doubt as to whether a prior amendment was entered, the claim should be presumed to be “not entered”. Amendments to Claims (Continued)

32 September 25, 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. Amendments to Claims (Continued)

33 September 25, 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). Amendments to Claims (Continued)

34 September 25, 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.” Amendments to Claims (Continued)

35 September 25, Canceled claims and not entered claims may only have a “canceled” or “not entered” status identifier after the claim number. The text must not be supplied. Grouping of Claims – consecutive canceled claims or not entered claims may be aggregated into one line. Examples: Claims 1-5 (canceled) Claims (not entered) New or added claims must have “new” as a status identifier Do not underline the text of the new claims. Amendments to Claims (Continued)

36 September 25, Markings to Show Changes: The following must include markings to show all changes relative the immediate prior version: Replacement paragraphs or sections, Replacement abstracts, Currently amended claims, and Substitute specifications. Added text must be shown by underlining. Deleted text must be shown by strikethrough with 2 exceptions. Revised Amendment Practice (Continued)

37 September 25, Markings to Show Changes (cont’) Deleted text must be shown by strikethrough (e.g., strikethrough), with 2 exceptions: 1.For deletion of five or fewer consecutive characters, double brackets [[ ]] may be used (e.g., [[eroor]]); and 2.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”. Revised Amendment Practice (Continued)

38 September 25, Markings to Show Changes (cont’) 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” Revised Amendment Practice (Continued)

39 September 25, The location of the paragraph or section to be deleted or replaced, or where a new paragraph or section is to be added, must be unambiguously identified. The location can be identified by using a few words at the beginning and/or the end of the paragraph or section. Do not underline the text of a new paragraph or section. Deletion of a paragraph or section must only include an instruction to delete, and the location of the paragraph or section. Replacement paragraph or section must be a marked-up version showing the changes. A clean version of any replacement paragraph or section must not be submitted in addition to a marked up version, except when applicant submits a substitute specification. Amendments to Specification

40 September 25, 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). Amendments to Abstract

41 September 25, Substitute Specification under 37 CFR 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. Substitute Specification

42 September 25, Amendment to drawings must include: Replacement drawing sheet showing amended figures which include the desired changes, without markings, on a separate sheet in compliance with §1.84; and Explanation of the changes in the remarks, or preferably, in the drawing amendments section, of the amendment paper. Optional unless required by examiner: Annotated drawing sheet – a marked-up copy of the amended figure(s) with annotations showing the change(s) may be submitted, or required by the examiner. Amendments to Drawings

43 September 25, 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). Amendments to Drawings (Continued)

44 September 25, 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. Amendments to Drawings (Continued)

45 September 25, 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 now provides for amending drawings in reissue applications in a similar manner. Amendments to Drawings (Continued)

46 September 25, 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. Amendments to Drawings (Continued)

47 September 25, Any amendment after final (§1.116), or amendment filed with a request for continued examination (RCE) under §1.114, must include markings showing the changes relative to the last entered amendment. Do not include markings to show changes relative to any unentered amendment. Applicant should not assume that an after final amendment is entered because after final amendments are not entered as a matter of right (§1.116). After Final Amendments

48 September 25, 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. After Final Amendments (Continued)

49 September 25, 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 (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). After Final Amendments (Continued)

50 September 25, Applicants will be notified of any amendment paper that is not accepted because the changes do not comply with revised § 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 (8 th Ed. 1 st Rev., Feb. 2003). Treatment of Non-Compliant Amendments

51 September 25, 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 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 Treatment of Non-Compliant Amendments (Continued)

52 September 25, 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. Example

53 September 25, Non-compliant claim amendment example continued: In reply to the Notice, applicant must submit a corrected claim listing that includes a status identifier for each claim. The new claims must be presented with the status identifier of “new” and the text of the claims not underlined. Note: the new claims must not be presented with the status identifier of “not entered” and must not be renumbered as claims 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. Example (Continued)

54 September 25, Non-compliant claim amendment example continued: The Office would enter: 1.The amendments to the specification from the original amendment paper, and 2.The amendments to the claims that include the corrected claim listing from the paper filed in reply to the Notice. Example (Continued)

55 September 25, The revised amendment practice under 37 CFR 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 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. International Applications

56 September 25,  Any questions regarding the submission of amendments pursuant to the revised practice should be directed to Office of Patent Legal Administration (OPLA): Call (703) , to Contact one of the following Legal Advisors: Elizabeth Dougherty Eugenia Jones Joe Narcavage Information Contacts

57 September 25, 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 (May 30, 2003), 1271 Off. Gaz. Pat. Office 143 (June 24, 2003)(final rule).

58 September 25, 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 § Note: If the request for a CPA does not satisfy all of the RCE requirements under §1.114, the request will be treated as an improper RCE. Any CPA filed in a utility or plant application that was filed before June 8, 1995 will be treated under 37 CFR 1.53(e) as an improper application. CPA practice remains in effect for design applications. Elimination of CPA Practice

59 September 25, 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).

60 September 25, The notice clarifies that: (1) If an applicant makes a nonpublication request and then rescinds the nonpublication request before/on the date a counterpart application is filed in an eighteen-month publication country, the application will be treated as if the nonpublication request was never made. (2) If an applicant makes a nonpublication request, subsequently files a counterpart application in an eighteen-month publication country and also files a notice of this foreign filing within forty-five days of the date such counterpart application was filed, the applicant is not required to rescind the nonpublication request. Notice of Foreign Filing

61 September 25, The notice clarifies that (continued): (3) If an applicant makes a nonpublication request and subsequently files a counterpart application in an eighteen- month publication country before the nonpublication request is rescinded, the applicant is required to notify the USPTO of the foreign filing not later than forty-five days after the date such counterpart application was filed to avoid abandonment of the application (even if no one recognizes that the application is abandoned). (4) When an application is abandoned due to the failure to timely notify the USPTO of the filing of a counterpart application in an eighteen-month publication country, applicant’s sole remedy to restore the application to pending status is by filing a petition under 37 CFR 1.137(b) to revive the abandoned application. Notice of Foreign Filing (Continued)

62 September 25, The notice clarifies that (continued): (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 (revision April 2001 or later) to both rescind a nonpublication request and provide notice of foreign filing. Notice of Foreign Filing (Continued)

63 September 25, 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).

64 September 25, 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 (2002), which, in effect, overruled In re Portola, 100 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). See In re Robert T. Bass, 65 USPQ2d 1156, 1157 (Fed. Cir. 1997). Permits reexamination on the basis of prior art that was previously cited by or to, or considered by, the USPTO. In any reexamination ordered on or after November 2, 2002 (the effective date of the statutory revision), reliance on old art does not necessarily preclude the existence of a substantial new question of patentability that is based exclusively on that old art. Reexamination Guidelines

65 September 25, Patent Cooperation Treaty January 2004 Revision of Patent Cooperation Treaty Application Procedure; proposed rulemaking, 68 Fed. Reg (May 30, 2003), 1271 Off. Gaz. Pat Office 147 (June 24, 2003). Final Rule expected to be published in early November 2003

66 September 25, 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

67 September 25, 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

68 September 25, 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

69 September 25, 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

70 September 25, 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

71 September 25, 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

72 September 25, 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

73 September 25, 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

74 September 25, 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

75 September 25, PCT Proposed Fees Transmittal fee: $ Search fee— corresponding § 111(a): $ no corresponding § 111(a): $1, Per additional invention: $1, Preliminary examination fee— USPTO was ISA: $ USPTO not ISA:$ Per additional invention: $600.00

76 September 25, 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 (June 27, 2003), 1272 OG 181 (July 29, 2003)(proposed rule). Available on the USPTO web site at: m No public hearings are scheduled.

77 September 25, 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)

78 September 25, Customer Number Practice MPEP 403 (8 th 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.

79 September 25, Customer Number Practice (Continued) MPEP 403 (8 th Ed. 2001) (Rev. 1, Feb 2003) 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.

80 September 25, 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 arcodes.htm

81 September 25, 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) or to

82 September 25, Batch Updates Notice of Elimination of Batch Update Practice to Change Power of Attorney, 1272 Off. Gaz. Pat. Office 24 (July 1, 2003)

83 September 25, Batch Updates 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. Questions regarding batch updates or Customer Number practice should be directed to the Electronic Business Center by telephone to (toll-free), , or by to

84 September 25, 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 (May 30, 2003), 1271 Off. Gaz. Pat. Office 98 (June 17, 2003).

85 September 25, Unity of Invention Study Key Milestones in 21 st 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.

86 September 25, Issues for Comment in Published Notices 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? Unity of Invention Study (Continued)

87 September 25, Issues for Comment (continued) 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? Unity of Invention Study (Continued)

88 September 25, Issues for Comment (continued) 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? Unity of Invention Study (Continued)

89 September 25, Issues for Comment (continued) 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)? Unity of Invention Study (Continued)

90 September 25, Issues for Comment (continued) Issue 9: Should the USPTO consider: (1) seeking a change to 35 U.S.C. 121 to adopt a Unity of Invention standard; (2) maintaining the current restriction practice in the USPTO; and (3) modifying the USPTO rules and procedures to adopt aspects of Unity of Invention practice without making any statutory changes Unity of Invention Study (Continued)

91 September 25, Issues for Comment (continued) Issue 10: Are there other solutions which have not been addressed in the request for comments? Unity of Invention Study (Continued)

92 September 25, Check the USPTO web site for important announcements New

93 September 25, Revised Amendment Practice Web Page

94 September 25, Image File Wrapper Web Page

95 September 25, Recent Patent-Related Notices

96 September 25, Office of Patent Legal Administration – (703) or e- mail to IFW – Final Rule – Jay Lucas (703) , Robert Clarke (703) , or Robert Spar (703) Amendment Practice – Elizabeth Dougherty (703) , Eugenia Jones (703) , or Joe Narcavage (703) Access under 37 CFR 1.14 – Karin Ferriter (703) , or Michael Lewis (703) Power of Attorney and Assignment (NPR) – Karin Ferriter (703) Reexamination- Jerry Dost (703) or Ken Schor (703) Reissue- Joe Narcavage (703) Information Contacts

97 September 25, Electronic Filing, CDs – Michael Lewis (703) or Jay Lucas (703) Comments on Unity Study – Robert Clarke (703) Elimination of CPA Practice – Eugenia Jones (703) Notice of Foreign Filing – Joni Chang (703) or Mark Polutta (703) Customer Number and Bar Code Labels – Karin Ferriter (703) Batch Updates - Karin Ferriter (703) PCT Application Procedure - Richard R. Cole (703) Information Contacts (Continued)

98 September 25, Thank You


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