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1 United States Patent and Trademark Office PATENT PRACTICE TIPS USPTO Signatures and Power of Attorney Terry J. Dey Technical Writer-Editor Office of.

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1 1 United States Patent and Trademark Office PATENT PRACTICE TIPS USPTO Signatures and Power of Attorney Terry J. Dey Technical Writer-Editor Office of Patent Legal Administration Terry J. Dey Technical Writer-Editor Office of Patent Legal Administration

2 United States Patent and Trademark Office 2 PATENT PRACTICE TIPS USPTO 5/9/ Types of Permitted Signatures 37 CFR § 1.4(d) Handwritten (personally signed) signatures are provided for in § 1.4(d)(1). S-signatures are provided for in § 1.4(d)(2): An S-Signature is a permitted type of signature between forward slash marks that is not handwritten (§ 1.4(d)(1)). Note: Samples of acceptable signatures are posted on the Office’s web site: _alt_text.pdf

3 United States Patent and Trademark Office 3 PATENT PRACTICE TIPS USPTO 5/9/2015 S-Signatures – 5 Requirements 37 CFR § 1.4(d)(2) The S-signature must consist only of letters (including Kanji, etc.), or Arabic numbers, or both, and appropriate spaces, commas, periods, apostrophes, or hyphens for punctuation. The person signing must insert his or her own signature between the forward slash marks, § 1.4(d)(2)(i). –Only the signer can insert his or her own signature: a secretary, paralegal, etc., is not permitted to sign/ insert another person’s signature, e.g., a practitioner’s or inventor’s signature, and a practitioner is not permitted to sign/insert an inventor’s signature or another practitioner’s signature.

4 United States Patent and Trademark Office 4 PATENT PRACTICE TIPS USPTO 5/9/2015 S-Signature – 5 Requirements (cont.) 37 CFR § 1.4(d)(2) The name of the person signing must be printed or typed immediately adjacent (i.e., below, above, or beside) to the S-signature, and be reasonably specific, so the identity of the signer can be readily recognized. The name of the person signing may be inserted by someone other than the person signing, but the person signing must personally insert the S-Signature. A secretary, paralegal, etc., may type the name of the person signing at any time (e.g., before or after the person signing inserts his or her own signature). A registered practitioner may S-sign but his or her registration number is required, either as part of the S- signature, or immediately below or adjacent to the signature. For example: /John Attorney Reg. #99999/ John Attorney

5 United States Patent and Trademark Office 5 PATENT PRACTICE TIPS USPTO 5/9/2015 Examples Where S-Signatures Can Be Used S-Signatures may be used for correspondence being filed in the Office for patent applications, patents and reexamination proceedings. A practitioner creates a document and S-signature signs it on his/her PC. The practitioner can then: –Facsimile transmit the document directly from the PC to the Office; –File the document via EFS-Web; or –Print the document and then facsimile transmit, mail, or hand-carry the document to the Office An affidavit under § is S-signed by the party making the affidavit, the S-signed affidavit is then: –Electronically sent to the practitioner, e.g., via an . The practitioner can then facsimile transmit, mail or hand-carry the S-signature signed document to the Office, in addition to filing via EFS-Web. S-Signatures may not be used for papers submitted to the Office of Enrollment & Discipline § 1.4(e).

6 United States Patent and Trademark Office 6 PATENT PRACTICE TIPS USPTO 5/9/2015 Name Requirement for S-Signatures There is no requirement that the signer’s actual, full or legal name be used. –It is strongly suggested that the full name be used for both; –The typed or printed name below the signature must be reasonably specific enough so that the identity of the signer can be readily recognized (§ 1.4(d)(2)(iii)(B)). Titles may be included as part of the signature. Changes in S-signature (different papers or different applications) are not recommended. § 1.4(h) –Example: An s-signature that includes the attorney docket number for that application would not be a consistent signature.

7 United States Patent and Trademark Office 7 PATENT PRACTICE TIPS USPTO 5/9/2015 Questionable Signatures Ratification, confirmation or evidence of authenticity of a signature may be required where the Office has: –Reasonable doubt as to its authenticity, –Where the signature and typed or printed name do not clearly identify the person signing. The failure to follow the S-signature format and content requirements will usually be treated as a bona fide attempt, but will cause the paper to be treated as unsigned with differing results, e.g.: –Amendments would receive a new 1-month time period –§ 1.63 declarations would receive a two month time period and a surcharge may be imposed.

8 United States Patent and Trademark Office 8 PATENT PRACTICE TIPS USPTO 5/9/2015 Certification Requirements 37 CFR § 1.4(d)(4) Certification Requirement A.For another’s signature: A person submitting a document signed by another under § 1.4(d)(2): –is obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted that signature, and –should retain evidence of authenticity of the signature. B.For your own signature: The person inserting a signature under § 1.4(d)(2) in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. Violations of the signature certifications may result in the imposition of sanctions under §§ 10.18(c) and (d).

9 United States Patent and Trademark Office 9 PATENT PRACTICE TIPS USPTO 5/9/2015 Power of Attorney 37 CFR §1.32(b) 37 CFR § 1.32(b) sets forth power of attorney requirements: Must be in writing, Name one or more representatives in compliance with § 1.32(c), Give the representative power to act on behalf of the principal, and Be signed by the applicant for patent (§ 1.41(b)) or the assignee of the entire interest of the applicant.

10 United States Patent and Trademark Office 10 PATENT PRACTICE TIPS USPTO 5/9/2015 A power of attorney must name as representative either: one or more joint inventors; up to ten registered patent attorneys or registered patent agents; or those registered patent practitioners associated with a Customer Number. Power of Attorney 37 CFR §1.32(b)

11 United States Patent and Trademark Office 11 PATENT PRACTICE TIPS USPTO 5/9/2015 If a power of attorney names more than ten patent practitioners Power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in application or patent to which the power of attorney is directed. If no separate paper, no power of attorney will be entered. The separate paper can be signed by one of the attorneys or agents of record, by a patent attorney or agent acting in a representative capacity, the assignee, acting pursuant to 37 CFR § 3.73(b), or by all of the applicants. The separate paper cannot request that a Customer Number be used instead, only the applicant or assignee can give power of attorney to a Customer Number. Power of Attorney; 37 CFR 1.32(c)

12 United States Patent and Trademark Office 12 PATENT PRACTICE TIPS USPTO 5/9/2015 Acting in a Representative Capacity § 1.34 A registered patent attorney or patent agent not of record but acting in a representative capacity must specify his/her: Registration number Name Signature

13 United States Patent and Trademark Office 13 PATENT PRACTICE TIPS USPTO 5/9/2015 A person acting in a representative capacity may not sign: A power of attorney, A document granting access to an application unless - an executed declaration has been filed or - the practitioner was named in the papers accompanying the application papers, A change in correspondence address except where an executed oath/declaration has not been filed and the practitioner filed the application, A terminal disclaimer, or A request for an express abandonment without filing a continuing application Acting in a Representative Capacity § 1.34

14 United States Patent and Trademark Office 14 PATENT PRACTICE TIPS USPTO 5/9/2015 ●Do not use a combined declaration/power of attorney (POA) form: ─ Use a separate declaration form and a separate power of attorney form. ●Use of a combined form could be a problem if: ─ A continuation is filed, and it includes a copy of the original declaration/POA but the POA was changed in the parent application (MPEP (c)II, VII); ─ The assignee is the real client, not the inventor. ●The POA should be from whomever is controlling the attorney (the real client). ─ Who is paying the fees, including the attorney fees? ─ Who is consulted when decisions have to be made? Recommendation: Separate the POA from the Declaration/Oath

15 United States Patent and Trademark Office 15 PATENT PRACTICE TIPS USPTO 5/9/2015 Note the following rules, and canons from Part 10 of 37 CFR: § 10.56: Canon 4: A practitioner should preserve the confidences and secrets of a client. § 10.57: “ Confidence ” and “ Secret ” defined, and guidelines given for related actions. § 10.61: Canon 5: A practitioner should exercise independent professional judgment on behalf of a client. § 10.68: Avoiding influence by others than the client. § 10.76: Canon 6: A practitioner should represent a client competently. § 10.83: Canon 7: A practitioner should represent a client zealously within the bounds of the law. Recommendation: Separate the POA from the Declaration/Oath (cont.)

16 United States Patent and Trademark Office 16 PATENT PRACTICE TIPS USPTO 5/9/2015 An assignee of the entire interest must establish its right to take action as provided in 37 CFR § 3.73(b). Forms PTO/SB/81 (POA or Revocation of POA) contain check boxes to identify the person signing. For the assignee, the forms read “ Statement under 37 CFR 3.73(b) (Form PTO/SB/96) submitted herewith or filed on___. ” Form PTO/SB/80 ( “ Power of Attorney to Prosecute Applications Before the USPTO ” ) is a general POA and does not include application information. File the PTO/SB/96 or equivalent together with this form to identify the specific application. The title of the person signing should be identified on the POA. Where the signer does not have apparent authority (e.g., an officer of the assignee), a statement that the signer is empowered to act must be contained in the submission. POAs Signed by the Assignee

17 United States Patent and Trademark Office 17 PATENT PRACTICE TIPS USPTO 5/9/2015 Statement under 37 CFR §3.73(b): The information required by the rule does not have to be set forth in a separate document (i.e., PTO/SB/96), but use of the Office ’ s form is recommended. When using the PTO/SB/81, the best practice is to have both the POA and the §3.73(b) statement signed by the same person since the POA forms do not contain a “ title ” box or the “ empowered to act ” language needed when the person signing does not have apparent authority. If §3.73(b) statement already of record for the assignee taking action, no need for a second one with POA. POAs Signed by the Assignee (cont.)

18 United States Patent and Trademark Office 18 PATENT PRACTICE TIPS USPTO 5/9/2015 What is the recommended approach for an assignee to give a POA in a large number of applications? Execute a single PTO/SB/80 form. It is general POA, and it will be effective for any/all of assignee ’ s applications in which it is filed. Use PTO/SB/96 form (Statement under 37 CFR § 3.73(b)) to establish assignee ownership and the right of the assignee to take action in a specific application. Indicate the reel and frame where the chain of title documents have been recorded in the Office; or Append a copy of title document(s) and check the box to state that documentary evidence has been, or is currently being, submitted (separately) for recordation to the Assignment Division. The Assignee Should Give the POA via a General Power

19 United States Patent and Trademark Office 19 PATENT PRACTICE TIPS USPTO 5/9/2015 What is the recommended approach for an assignee to give a POA in a large number of applications? (cont.) Give specific authority to an appointed practitioner to act on behalf of the assignee. Practitioner must be given authority to bind the assignee entity. This can be accomplished in a separate document signed by the assignee (client) that is retained in the practitioner ’ s files. Then, a PTO/SB/96 can be completed and signed by the practitioner for each specific application, rather than having the assignee sign a PTO/SB/96 for each application. The Assignee Should Give the POA via a General Power (cont.)

20 United States Patent and Trademark Office 20 PATENT PRACTICE TIPS USPTO 5/9/2015 File a copy of the executed PTO/SB/80 (a general POA) together with the executed PTO/SB/96 (to identify a specific application) using a cover letter identifying both. NOTE: Copies of the chain of title document(s) must be separately submitted for recordation in the Assignment Division per 37 CFR § 3.11 before, or concurrently, with the filing of the PTO/SB/96. Filing before is preferred, if possible, to avoid inadvertent forwarding of the copy to the Assignment Division for recordation. Alternatively, if it is not burdensome for the assignee to execute a POA for each application, execute and file PTO/SB/81 (a specific POA) together with the executed PTO/SB/96, using a cover letter identifying both. The Assignee Should Give the POA via a General Power (cont.)

21 United States Patent and Trademark Office 21 PATENT PRACTICE TIPS USPTO 5/9/2015 Use a CN to identify practitioners who are to be given power of attorney. –Customer Number practice allows the list of practitioners to be easily changed. –Power of Attorney cannot be given to both a CN and a list of practitioners. Establish a new CN if a unique set of practitioners is to be given POA. –To change to a different CN, however, a separate POA must be filed in each application. Recommendation: Use a Customer Number When Possible

22 United States Patent and Trademark Office 22 PATENT PRACTICE TIPS USPTO 5/9/2015 Ensure that the same CN is used for the Correspondence Address, so that the practitioners all have access to Private PAIR for the applications for which they hold POA. Very easy to change the correspondence address in multiple applications: –Just change the address data associated with the CN, and it will apply to all applications. –The change can be made by any attorney of record (with a POA). Recommendation: Use a Customer Number When Possible (cont.)

23 United States Patent and Trademark Office 23 PATENT PRACTICE TIPS USPTO 5/9/2015 Examples of Power of Attorney: A.Power of Attorney by the Inventor (Examples A1-A4) B.Power of Attorney by the Assignee (Examples B1-B3)

24 United States Patent and Trademark Office 24 PATENT PRACTICE TIPS USPTO 5/9/2015 Mary Jones Example A1 Inventors Bob Smith, Mary Jones and Tom Williams are named inventors in the application. Three PTO/SB/81 forms are filed. –The forms that are signed by Bob Smith and Mary Jones appoint the practitioners associated with Customer No , and direct correspondence to the address associated with Customer No –The form signed by Tom Williams appoints the practitioners associated with Customer No and directs correspondence to the address associated with Customer No Bob Smith Tom Williams Customer No Customer No

25 United States Patent and Trademark Office 25 PATENT PRACTICE TIPS USPTO 5/9/2015 Example A1 (cont.) * This power of attorney is not proper and should not be accepted. POA by less than all of the inventors requires a petition. See MPEP Form PTO/SB/81 The POA signed by inventor Tom Williams appoints practitioners associated with Customer No The two POAs signed by inventors Bob Smith and Mary Jones appoint the practitioners associated with Customer No

26 United States Patent and Trademark Office 26 PATENT PRACTICE TIPS USPTO 5/9/2015 Example A2 Inventors A and B are named inventors in the application. Two PTO/SB/81 forms are filed, one signed by A and one signed by B. Both forms appoint the practitioners associated with Customer No , but direct correspondence to the address associated with Customer No *The power of attorney is proper and should be accepted. Form PTO/SB/81

27 United States Patent and Trademark Office 27 PATENT PRACTICE TIPS USPTO 5/9/2015 Example A3 Inventor A is the sole inventor in the application. Two years ago, the inventor executed an original oath or declaration and appointed attorney X by power of attorney. The inventor died several months ago, therefore the power of attorney to attorney X has terminated. *The power of attorney is proper and should be accepted. The legal representative of Inventor A has decided to intervene and continue prosecution of the application with new attorney Y. The legal rep. may execute a declaration form PTO/SB/02LR along with form PTO/SB/81 appointing new attorney Y. Form PTO/SB/81

28 United States Patent and Trademark Office 28 PATENT PRACTICE TIPS USPTO 5/9/2015 Example A4 Inventors A and B are named inventors in the application. Both inventors execute a declaration, but do not appoint an attorney. Inventor A dies. Inventor B files proof that Inventor A is dead, in accordance with MPEP (f). No legal representative of deceased Inventor A has intervened in the application. Form PTO/SB/81 is filed in the application and is signed by Inventor B. *The power of attorney is proper and should be accepted.

29 United States Patent and Trademark Office 29 PATENT PRACTICE TIPS USPTO 5/9/2015 Example B1 XYZ Corporation is the assignee of the entire interest of an application that names A and B as inventors. Bob Smith, President of XYZ Corporation, signs a general power of attorney (PTO/SB/80) appointing the practitioners associated with Customer No and directing correspondence to the address associated with Customer No The PTO/SB/80 is filed with a properly- completed PTO/SB/96 (3.73(b) form) signed by Ted Mason (Registration No ), one of the practitioners associated with Customer No On the PTO/SB/96, Boxes “1” and “A” are checked, and the Reel and Frame are identified. Form PTO/SB/96

30 United States Patent and Trademark Office 30 PATENT PRACTICE TIPS USPTO 5/9/2015 Example B1 (cont.) The box next to the words “As required by 37 CFR 3.73(b)(1)(i), the documentary evidence…” is not checked only if all reels and frames are provided. The USPTO official views the information recorded at the Reel and Frame, and both inventors are listed as assignors to XYZ Corporation. *The power of attorney is proper and should be accepted. Form PTO/SB/96

31 United States Patent and Trademark Office 31 PATENT PRACTICE TIPS USPTO 5/9/2015 Example B2 XYZ Corporation is the assignee of the entire interest of an application that names A and B as inventors. Bob Smith, President of XYZ Corporation, signs a general power of attorney (PTO/SB/80) appointing the practitioners associated with Customer No and directing correspondence to the address associated with Customer No The PTO/SB/80 is filed with the PTO/SB/96 (3.73(b) form) signed by Ted Mason, one of the practitioners associated with Customer No Form PTO/SB/96

32 United States Patent and Trademark Office 32 PATENT PRACTICE TIPS USPTO 5/9/2015 Example B2 (cont.) On the PTO/SB/96, Boxes “1” and “A” are checked, a copy of the assignment document was included, but the box next to the words “As required by 37 CFR 3.73(b)(1)(i), the documentary evidence…” is not checked. A copy of the assignment document was not recorded in the Assignment Division. *The power of attorney is not proper and should not be accepted. Applicant must record the assignment documents and assert that the assignment documents were, or concurrently are being, submitted for recordation. Box not checked Form PTO/SB/96

33 United States Patent and Trademark Office 33 PATENT PRACTICE TIPS USPTO 5/9/2015 Example B3 XYZ Corporation is the assignee of the entire interest of an application that names A and B as inventors. Bob Smith, President of XYZ Corporation, signs a specific power of attorney PTO/SB/81 appointing the practitioners associated with Customer No and directing correspondence to the address associated with Customer No A PTO/SB/96 (3.73(b) form) is filed with the PTO/SB/80 and is signed by Bob Smith, President of XYZ Corporation.

34 United States Patent and Trademark Office 34 PATENT PRACTICE TIPS USPTO 5/9/2015 Example B3 (cont.) On the PTO/SB/96, none of the boxes are checked, no Reel and Frame is identified, and no copy of the assignment documents is filed with the forms. *The power of attorney is not proper and should not be accepted. The form must be properly filled out and comply with 37 CFR 3.73(b). Form PTO/SB/96

35 United States Patent and Trademark Office 35 PATENT PRACTICE TIPS USPTO 5/9/2015 Request to Withdraw from Representation in a Patent Application Office no longer requires at least 30 days between approval of the withdrawal and the later of the expiration date of a time period which can be obtained by a petition and fee for extension of time for reply for a practitioner to withdraw. Office will not grant a request to withdraw in a patent. Office will not approve request to withdraw from practitioners who acted in a representative capacity (§ 1.34).

36 United States Patent and Trademark Office 36 PATENT PRACTICE TIPS USPTO 5/9/2015 Request to Withdraw from Representation in a Patent Application Office now requires the practitioner(s) to certify that he, she or they have: 1.Given reasonable notice to the client, prior to the expiration of the response period, that practitioner(s) intend to withdraw from employment; 2.Delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and 3.Notified the client of any responses that may be due and the time frame within which the client must respond.

37 United States Patent and Trademark Office 37 PATENT PRACTICE TIPS USPTO 5/9/2015 Request to Withdraw from Representation in a Patent Application The Office will no longer accept address changes to a new practitioner, absent a new power of attorney when processing a request to withdraw. Correspondence address will be changed to assignee of the entire interest who has properly become of record pursuant to 37 CFR 3.71 or the first named inventor. Note: PTO/SB/83

38 38 United States Patent and Trademark Office PATENT PRACTICE TIPS USPTO Patent Practice Tips Mark Polutta Senior Legal Advisor Office of Patent Legal Administration Mark Polutta Senior Legal Advisor Office of Patent Legal Administration

39 United States Patent and Trademark Office 39 PATENT PRACTICE TIPS USPTO 5/9/2015 Topics 1.Examining Patent Applications 2.Avoid most common mistakes during prosecution 3.Patents’ Initiatives and Projects 4.Helpful hints (Appendix)

40 United States Patent and Trademark Office 40 PATENT PRACTICE TIPS USPTO 5/9/2015 Examining an Application

41 United States Patent and Trademark Office 41 PATENT PRACTICE TIPS USPTO 5/9/2015 Avoid Mistakes Throughout Prosecution §Tips and Suggestions Preparing the Application Filing the Application Avoiding Publication Pitfalls Examination Processing Tips Post Allowance Tips Best Practice Tips (see Appendix)

42 United States Patent and Trademark Office 42 PATENT PRACTICE TIPS USPTO 5/9/2015 Preparing the Application Avoid submitting an application in the European problem/solution format.  Format the application according to US rules and procedures. See MPEP § 608 Avoid including multiple dependent claims that depend from other multiple dependent claims  Craft claims according to US practice, see MPEP § (n) Avoid including “Use” claims  Craft claims according to US practice, see MPEP § (k)

43 United States Patent and Trademark Office 43 PATENT PRACTICE TIPS USPTO 5/9/2015 Pre-Examination Tips Forms Do use USPTO forms without altering the language. Do not use a combined declaration and power of attorney form. USPTO forms can be found at:

44 United States Patent and Trademark Office 44 PATENT PRACTICE TIPS USPTO 5/9/2015 Pre-examination Tips Application Data Sheets Do use an Application Data Sheet (ADS), although an ADS is not required. Customers using an ADS can expect two advantages when applying for a patent: 1. Improved accuracy of filing receipts. 2. Accurately recorded application data.

45 United States Patent and Trademark Office 45 PATENT PRACTICE TIPS USPTO 5/9/2015 Pre-examination Tips Application Data Sheets (Cont’d) Use of a supplemental ADS is possible even though no original ADS was submitted on filing. The following information can be supplied on an ADS:  Application Information  Applicant Information  Correspondence Information  Representative Information  Domestic Priority Information  Foreign Priority Information  Assignment Information

46 United States Patent and Trademark Office 46 PATENT PRACTICE TIPS USPTO 5/9/2015 Pre-examination Tips Preliminary Amendments In New Applications  Avoid submitting Preliminary Amendments on filing  A substitute specification will be required if a preliminary amendment present on filing makes changes to the specification, except for:  Changes to title, abstract, claims or addition of benefit claim information to the specification  See the notice “Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application,” 1300 Off. Gaz. Pat. Office 69 (November 8, 2005), available at: k45/patrevs.htm

47 United States Patent and Trademark Office 47 PATENT PRACTICE TIPS USPTO 5/9/2015 Pre-Examination Tips Preliminary Amendments in Continuations and Divisionals  Avoid submitting Preliminary Amendments on filing a Continuation or Divisional  Avoid Preliminary Amendments that cancel all the claims and add new ones

48 United States Patent and Trademark Office 48 PATENT PRACTICE TIPS USPTO 5/9/2015 Filing the Application Select a method of filing the application 1. Accelerated Examination 2. EFS-Web 3. Traditional Mail Route

49 United States Patent and Trademark Office 49 PATENT PRACTICE TIPS USPTO 5/9/2015 Filing the Application Accelerated Examination Common Failings Failure to provide the text search logic. A mere listing of terms will not suffice. Failure to search the claimed invention. The petition for accelerated examination may be dismissed if the search is not commensurate in scope with the claims. Failure to show support in the specification and/or drawings for each limitation of each claim.

50 United States Patent and Trademark Office 50 PATENT PRACTICE TIPS USPTO 5/9/2015 Filing the Application Accelerated Examination Common Failings (Cont) Failure to show support in the specification and/or drawings for each limitation of each claim for every document whose benefit is claimed. Failure to specifically identify the limitations in each claim that are disclosed in each reference.

51 United States Patent and Trademark Office 51 PATENT PRACTICE TIPS USPTO 5/9/2015 Filing the Application EFS-Web Filing Avoid coding (identifying) a Request for Continued Examination (RCE) as an “Amendment” when filing an RCE Avoid identifying papers after the initial filing as “new” Avoid common PCT filing mistakes Avoid filing color images or images that have a resolution higher than 300x300 dots per inch (dpi)

52 United States Patent and Trademark Office 52 PATENT PRACTICE TIPS USPTO 5/9/2015 Avoid Publication Pitfalls Nonpublication Requests Avoid inconspicuous requests for nonpublication. Publication will generally include all preliminary amendments submitted in time to be included in the publication. If amendments to the specification are desired to be included in publication, submit a substitute specification.

53 United States Patent and Trademark Office 53 PATENT PRACTICE TIPS USPTO 5/9/2015 Avoid Publication Pitfalls Publication Corrections Practitioners must include the assignment information in the transmittal letter or ADS. Avoid misspelling the names of inventors or assignees. Review the filing receipt promptly so that corrections can be requested before publication or export of data for publication. Avoid filing requests for Corrected Publication 37 CFR § 1.221(b) that fail to recite material errors.

54 United States Patent and Trademark Office 54 PATENT PRACTICE TIPS USPTO 5/9/2015 Examination Processing Tips General Prosecution Advice Amendments to the claims and/or specification should be accompanied by a written statement indicating specific support for the change. If the support is implicit, an explanation is beneficial. In response to restriction requirements, where inventions are indeed patentably indistinct, applicants should present arguments to that end. Read the entire prior art reference cited by the examiner, not just the part relied upon by the examiner in the rejection.

55 United States Patent and Trademark Office 55 PATENT PRACTICE TIPS USPTO 5/9/2015 Examination Processing Tips Pre-Appeal Brief Conference Avoid sending the request separate from the Notice of Appeal. Avoid making a request when there is an outstanding after-final amendment. Avoid attaching more than five pages to the cover form. Avoid sending in a supplemental request. Avoid paying a second Notice of Appeal fee in the application.

56 United States Patent and Trademark Office 56 PATENT PRACTICE TIPS USPTO 5/9/2015 Examination Processing Tips Filing of Continuation-in-Part (CIP) Applications Consider prosecuting an improved CIP invention independently of the prior invention:  File, if need be, a continuation only to the original invention, or take an appeal on the original invention, and  File a new application, rather than a CIP, for only the new invention: without a benefit claim (35 U.S.C. §120, 37 CFR § 1.78) to the initial application, and therefore without shortening the patent term of the initial invention if it were to be included in the CIP application, as any benefit claim in a CIP cannot protect the new invention.

57 United States Patent and Trademark Office 57 PATENT PRACTICE TIPS USPTO 5/9/2015 Post Allowance Tips Issue Fee Payments Avoid filing an Information Disclosure Statement (IDS) after payment of the issue fee.  File an IDS filed after payment of the issue fee with a Petition for Withdrawal from Issue (37 CFR 1.313(c)) and an RCE (37 CFR § 1.114). Otherwise, the IDS will be placed in the file and the cited documents will not be considered by the examiner. Avoid delays in paying the issue fee.  The issue fee payment may be submitted via facsimile to the Office of Patent Publications ((571) ) or EFS-Web to ensure the payment is received within the non-extendable time period set forth in the Notice of Allowance and Fee(s) Due (PTOL-85).

58 United States Patent and Trademark Office 58 PATENT PRACTICE TIPS USPTO 5/9/2015 Post Allowance Tips Withdrawal from Issue Petitions to Withdraw from Issue may be hand carried or sent via facsimile to the Office of Petitions.  Hand carries should be brought to the security guard station of the Madison West building, 600 Dulany Street, Alexandria VA  The facsimile number for the Office of Petitions is (571) Note: All other types of petitions must be directed to the Central FAX ((571) ).

59 United States Patent and Trademark Office 59 PATENT PRACTICE TIPS USPTO 5/9/2015 Initiatives and Programs Patents Teleworking and Laptop Programs Virtual Art Unit Pilot Alternative Examination Products Worksharing Peer Pilot Review Accelerated Examination First Action Interview Pilot External Quality Metrics Applicant Quality Submissions Electronic Filing

60 United States Patent and Trademark Office 60 PATENT PRACTICE TIPS USPTO 5/9/2015 Patents Teleworking & Laptop Programs Over 1,250 examiners participating in the Patents Hoteling Program, since initiated in 2006  Program allows examiners to work from home 4 days per week with USPTO electronic tools  Will add additional 500 examiners to program in FY 2008

61 United States Patent and Trademark Office 61 PATENT PRACTICE TIPS USPTO 5/9/2015 Patents Teleworking & Laptop Programs  Over 2300 laptops distributed through Patent Examiner Laptop Program (PELP) Both Hoteling and Laptop programs show production gains in line with increase in total examination time, as well as improved morale and job satisfaction

62 United States Patent and Trademark Office 62 PATENT PRACTICE TIPS USPTO 5/9/2015 Virtual Art Unit Pilot USPTO Pilot to evaluate the feasibility of establishing “virtual art units”  Conducted April September 2007  13 Examiners and 1 SPE at home  received full PHP equipment  37 examiners remained on USPTO campus  received collaboration tools and training  Random reviews by Office of Patent Quality Assurance  Surveys administered to all examiners in the art unit; evaluating application of data

63 United States Patent and Trademark Office 63 PATENT PRACTICE TIPS USPTO 5/9/2015 Alternative Examination Products Patent Public Advisory Committee (PPAC) outreach project ●Conducting focus sessions and interviews to obtain insight and feedback ●Patentee / Trade Organization / User Input ●Wants and Needs for IP Protection ●Different Levels of Examination / Protection

64 United States Patent and Trademark Office 64 PATENT PRACTICE TIPS USPTO 5/9/2015 Worksharing Number of initiatives underway to promote examination efficiencies in participating IP offices Patent Prosecution Highway (PPH)  Full implementation (January 4, 2008) - JPO  Pilot – UK IPO, CIPO, and KIPO

65 United States Patent and Trademark Office 65 PATENT PRACTICE TIPS USPTO 5/9/2015 Peer Review Pilot 1 year pilot (began June 15, 2007) for members of the public to submit prior art with commentary, using Internet peer review techniques, in volunteered published applications to a public website (www.peertopatent.org)www.peertopatent.org –75 applications volunteered –TC 2100 technology only –10 pieces of prior art max per application (avg. was 4) Pilot extended 1 year to include Business Methods – Class 705 –Encourage more participation –Technology heavy with Non-patent literature

66 United States Patent and Trademark Office 66 PATENT PRACTICE TIPS USPTO 5/9/2015 Accelerated Examination Change in practice effective August 25, 2006 Opportunity for final determination in 12 months Participation requires:  Applicants provide greater information up front – pre- examination search and accelerated examination support document;  file application using electronic fling system;  agree to interviews  Limited number of claims

67 United States Patent and Trademark Office 67 PATENT PRACTICE TIPS USPTO 5/9/2015 Accelerated Examination Current Statistics As of July ’08:  293 applications allowed  On average, 182 days to complete prosecution  Minimum number of days to complete prosecution: patents have issued (8/19/08) Participants’ response & comments positive  Not only faster, but high quality

68 United States Patent and Trademark Office 68 PATENT PRACTICE TIPS USPTO 5/9/2015 First Action Interview Pilot Applicant requests to participate, as of July 5, 2008, 279 applicants have joined the pilot Application is NOT taken out of turn “Preliminary office action” is prepared and mailed to applicant – condensed version of typical first action on the merits After interview applicant receives copy of action or allowance with entry of proposed amendment Piloted in two workgroups of TC 2100

69 United States Patent and Trademark Office 69 PATENT PRACTICE TIPS USPTO 5/9/2015 External Quality Metrics USPTO working with external customers to develop quality metrics of relevance Future stakeholders surveys

70 United States Patent and Trademark Office 70 PATENT PRACTICE TIPS USPTO 5/9/2015 Quality is a shared responsibility “Applicants (and attorneys) must take responsibility for quality application preparation and prosecution and not rely solely on the examiner.” Applicant Quality Submissions (AQS)

71 United States Patent and Trademark Office 71 PATENT PRACTICE TIPS USPTO 5/9/2015 Applicant Quality Submissions (AQS) Proposal contained within pending Patent Reform legislation: H.R (passed by House on September 7, 2007) ‘‘§ 123. Additional information ‘‘(a) IN GENERAL.—The Director may, by regulation, require that applicants submit a search report and other information and analysis relevant to patentability...

72 United States Patent and Trademark Office 72 PATENT PRACTICE TIPS USPTO 5/9/2015 Applicant Quality Submissions (AQS) Similar language under consideration in S. 1145: § 123. Additional information; micro-entity exception (a) IN GENERAL.—The Director shall, by regulation, require that an applicant for a patent under this title submit to the Director— (1) a search report and analysis relevant to patentability; and (2) any other information relevant to patentability that the Director, in his discretion, determines necessary. (b) FAILURE TO COMPLY.—If an applicant fails to submit the search report, analysis, or information required under subsection (a) in the manner and within the time period prescribed by the Director, such application shall be regarded as abandoned.

73 United States Patent and Trademark Office 73 PATENT PRACTICE TIPS USPTO 5/9/2015 Electronic filing New EFS-Web system launched March 2006 § allows PDF-based submissions § replaced XML-based system 2005 result: 2.2% of applications filed electronically 2006 result: 14.3% of applications filed electronically 2007 result: nearly 50% of applications filed received through EFS-Web; over 1,000,000 (total) follow-on papers and new applications received 3rd Qtr 2008: 69.8% of applications filed electronically

74 United States Patent and Trademark Office 74 PATENT PRACTICE TIPS USPTO 5/9/2015 Electronic filing Safe, Simple, Secure Many corporations, law firms, and independent inventors moving to 100% electronic filing for new applications and follow-on papers.

75 75 United States Patent and Trademark Office PATENT PRACTICE TIPS USPTO APPENDIX BEST PRACTICES APPENDIX BEST PRACTICES

76 United States Patent and Trademark Office 76 PATENT PRACTICE TIPS USPTO 5/9/2015 Best Practices Priority Document Exchange Tips  Do provide a valid power of attorney with a submission for permission to access  Only the designated attorney or agent may grant permission to access.

77 United States Patent and Trademark Office 77 PATENT PRACTICE TIPS USPTO 5/9/2015 Best Practices Fee Payment Tips Avoid placing a stop payment on a check for USPTO services or to circumvent the rules of practice. This action is not appropriate.  Request a refund (37 CFR § 1.26) where fees were paid by mistake or in excess of the amount required. Avoid drafting a check to the USPTO for services on an account with insufficient funds.  Ensure that the account from which the check is drawn contains sufficient funds prior to submitting the check to the USPTO.

78 United States Patent and Trademark Office 78 PATENT PRACTICE TIPS USPTO 5/9/2015 Best Practices Fee Payment Tips Do use a Deposit Account Number on a transmittal form authorizing payment  Do not use a Customer Number to authorize payment of fees. Be clear with payment authorization statements.  Avoid contradictory statements on payment

79 United States Patent and Trademark Office 79 PATENT PRACTICE TIPS USPTO 5/9/2015 Best Practices Maintenance Fees/Deposit Accounts Maintenance fees and replenishing of deposit accounts at the USPTO can be done online: https://ramps.uspto.gov/eram https://ramps.uspto.gov/eram Inquiries related to deposit accounts, maintenance fees and refunds may be directed to the Office of Finance (571)

80 United States Patent and Trademark Office 80 PATENT PRACTICE TIPS USPTO 5/9/2015 Best Practices Prosecution Tips Proofread claims for clarity and precision Present all cogent arguments and evidence before final rejection If the examiner is believed to be ignoring a claim limitation, a personal or telephonic interview may facilitate the prosecution to completion.

81 United States Patent and Trademark Office 81 PATENT PRACTICE TIPS USPTO 5/9/2015 Best Practices Prosecution Tips (cont’d) Don’t initiate a response on the absolute last day of the statutory period, if possible. Don’t personally attack the Examiner in a response to Office Action. Follow the chain of command for assistance:  First, call the Examiner.  If he or she is non-responsive or unavailable, contact the Supervisor.  If the issue is still not resolved, contact the Technology Center Director.

82 United States Patent and Trademark Office 82 PATENT PRACTICE TIPS USPTO 5/9/2015 Recent Notices and Pre-OG Notices are posted at:

83 United States Patent and Trademark Office 83 PATENT PRACTICE TIPS USPTO 5/9/2015 Further Information USPTO Useful Web Links - Helpful Web Pages: Notices, Recent Patent-Related – a very current list of all Federal Register, Official Gazette and pre-Official Gazette notices, and certain Office memoranda: Forms Page – current USPTO forms available for use by the Public: Manual of Patent Examining Procedure (MPEP):

84 United States Patent and Trademark Office 84 PATENT PRACTICE TIPS USPTO 5/9/2015 Further Information USPTO Useful Web Links (cont’d) Mailing Addresses and Mail Stops: Facsimile Numbers: eek42/patcorr.htm USPTO Glossary:


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