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Signatures and Power of Attorney

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1 Signatures and Power of Attorney
Terry J. Dey Technical Writer-Editor Office of Patent Legal Administration

2 2 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: 4/15/2017

3 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. Indicate examples provided in handout. Examiners are to presume that an S-signature was properly inserted by the signer. Compliance should be presumed unless there is a specific indication otherwise. 4/15/2017

4 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 Regarding item 5; highlight that a registered practitioner includes those acting in a representative capacity 4/15/2017

5 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). 4/15/2017

6 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. 4/15/2017

7 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. 4/15/2017

8 Certification Requirements 37 CFR § 1.4(d)(4)
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. 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). 4/15/2017

9 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. 4/15/2017

10 Power of Attorney 37 CFR §1.32(b)
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. 4/15/2017

11 Power of Attorney; 37 CFR 1.32(c)
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. 4/15/2017

12 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 4/15/2017

13 Acting in a Representative Capacity § 1.34
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 4/15/2017

14 Recommendation: Separate the POA from the Declaration/Oath
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? 4/15/2017

15 Recommendation: Separate the POA from the Declaration/Oath (cont.)
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. 4/15/2017

16 POAs Signed by the Assignee
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. 4/15/2017

17 POAs Signed by the Assignee (cont.)
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. 4/15/2017

18 The Assignee Should Give the POA via a General Power
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. 4/15/2017

19 The Assignee Should Give the POA via a General Power (cont.)
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. 4/15/2017

20 The Assignee Should Give the POA via a General Power (cont.)
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. If filing assignment document concurrently for recording, a second copy of the assignment document is required to be filed with application to comply with 37 CFR 1.73(b).  Filing a copy of the assignment with Assignments Branch is for recording the assignment and it is not entered as a document into the application. 4/15/2017

21 Recommendation: Use a Customer Number When Possible
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. 4/15/2017

22 Recommendation: Use a Customer Number When Possible (cont.)
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). 4/15/2017

23 Examples of Power of Attorney:
Power of Attorney by the Inventor (Examples A1-A4) Power of Attorney by the Assignee (Examples B1-B3) 4/15/2017

24 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 Mary Jones 4/15/2017

25 Example A1 (cont.) The two POAs signed by inventors Bob Smith and Mary Jones appoint the practitioners associated with Customer No Form PTO/SB/81 The POA signed by inventor Tom Williams appoints practitioners associated with Customer No Applicants or owners cannot appoint different powers of attorney. A POA by less than all applicants/owners must be filed with a petition and fee set forth in 37 CFR 1.17(f). See MPEP Form PTO/SB/81 * 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 4/15/2017

26 Example A2 *The power of attorney is proper and should be accepted.
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 Form PTO/SB/81 *The power of attorney is proper and should be accepted. 4/15/2017

27 Example A3 *The power of attorney is proper and should be accepted.
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 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. The legal representative is not required to execute a declaration if one signed by the inventor is already of record, but it is recommended (1) so that the name of the legal representative will appear on any patent issuing from the application and (2) the record will clearly identify the person taking action. Ideally applicant should file a supplemental ADS and a request for a corrected filing receipt to ensure that the record is appropriately updated. Form PTO/SB/81 4/15/2017 *The power of attorney is proper and should be accepted.

28 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. Note: the MPEP requires proof of the death. The paper that accompanies such proof does not have to look exactly like the example provided on this slide. The point here is that once a joint inventor has provided proof of the death of one or more of the other inventors, the living inventors can appoint attorneys, and the Powers can be accepted although all of the inventors have not signed. However, once a legal representative has filed an oath or declaration on behalf of the deceased inventor, any POAs would need to be filed by the living inventor(s) and the legal representative. 4/15/2017 *The power of attorney is proper and should be accepted.

29 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 4/15/2017

30 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. Form PTO/SB/96 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. 4/15/2017

31 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 4/15/2017 Form PTO/SB/96

32 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. Box not checked Form PTO/SB/96 *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. 4/15/2017

33 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. 4/15/2017

34 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. Form PTO/SB/96 *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). 4/15/2017

35 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). 4/15/2017

36 Request to Withdraw from Representation in a Patent Application
Office now requires the practitioner(s) to certify that he, she or they have: Given reasonable notice to the client, prior to the expiration of the response period, that practitioner(s) intend to withdraw from employment; 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 Notified the client of any responses that may be due and the time frame within which the client must respond. 4/15/2017

37 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 4/15/2017

38 Office of Patent Legal Administration
Patent Practice Tips Mark Polutta Senior Legal Advisor Office of Patent Legal Administration

39 Examining Patent Applications
Topics Examining Patent Applications Avoid most common mistakes during prosecution Patents’ Initiatives and Projects Helpful hints (Appendix) 4/15/2017

40 Examining an Application
4/15/2017

41 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) 4/15/2017

42 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) US practice requires that the applications contain the format which is fully explained in MPEP 608. 608.01(a) Arrangement of Application 37 CFR Arrangement of application elements. (a) The elements of the application, if applicable, should appear in the following order: (1) Utility application transmittal form, (2) Fee transmittal form, (3) Application data sheet (see § 1.76). (4) Specification, (5) Drawings, (6) Executed oath or declaration. (b) The specification should include the following sections in order: (1) Title of the invention, (2) Cross-reference to related applications (unless included in the application data sheet) ,(3) Statement regarding federally sponsored research or development, (4) The names of the parties to a joint research agreement, (5) Reference to a “Sequence Listing,” a table, or a compact disc an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified. (6) Background of the invention, (7) Brief summary of the invention, (8) Brief description of the several views of the drawing, (9) Detailed description of the invention, (10) A claim or claims, (11) Abstract of the disclosure, (12) “Sequence Listing,” if on paper. - 4/15/2017

43 Forms Do use USPTO forms without altering the language.
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: If a form is altered for use by a practitioner, the statement appearing on the form regarding approval and the OMB number must be removed. Do file a separate declaration and power of attorney 4/15/2017

44 Application Data Sheets
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. Even though an ADS is not required, it is highly recommended. Not only does it improve accuracy and timeliness, it has other advantages such as Amendments to a benefit claim, inventor/s name, etc. are simpler to perform if an ADS is used. Reduces the number of requests for corrected filing receipts related to USPTO errors Reduces application prosecution delays and improves the accuracy of bibliographic data in patent application publications. 4/15/2017

45 Application Data Sheets (Cont’d)
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 Note: Providing Representative Information in an ADS does not constitute a power of attorney in the application. See 37 CFR § 1.32. 4/15/2017

46 Preliminary Amendments In New Applications
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: Make edits before filing applications which were originally filed outside the U.S. as claim type and dependencies are different. A substitute specification is necessary for pre-grant publication purposes. If the preliminary amendment makes changes to the title, abstract, claims, or adds benefit claim information to the specification, a substitute specification will not be required. 4/15/2017

47 Preliminary Amendments in Continuations and Divisionals
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 Incorporate new claims, changes to the specification, etc., into the application to be filed, as long as there is no new matter. Addition of new matter would require the filing of a continuation-in-part (CIP). File only the claims that you intend to prosecute in the application. Preliminary amendments are counted in the page tally for determining if an application size fee is due. A copy of the § 1.63 declaration from the prior application may be filed even if the written description/claims differ from those of the prior application since continuations or divisionals do not, by definition, contain new matter. Avoid a preliminary amendment in a continuation or divisional which cancels all the claims and introduces a new set. Although preliminary amendments to the claims do not automatically require a new specification, if any changes are made as a result of the new claims to the specification a new specification must be submitted. It is suggested that if all new claims are submitted file the entire specification and claims, rather than the preliminary amendments. It avoids the possibility of canceling all the claims and neglecting to submit new claims which may jeopardize the filing date. For CIP applications, a new declaration would be required. 4/15/2017

48 Filing the Application
Select a method of filing the application 1. Accelerated Examination 2. EFS-Web 3. Traditional Mail Route Once a decision has been made on how to file the applications, I want to give you a few tips to make the filing process a smooth one. The traditional route, via express mail or other postal services will be covered under general best practices. I do want to talk for a few minutes on filing via EFS-Web and filing an application through the accelerated examination process. 4/15/2017

49 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. The search should include US patents, US patent publications, foreign patents and publications and non-patent literature. Provide specific support including page, line, figure number. 4/15/2017

50 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. Provide specific support including page, line, figure for every application whose benefit is claimed. Provide a chart mapping claims and showing how each claim is patentable over the reference 4/15/2017

51 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) Use the RCE document code for RCE submissions Provide application identifying information. Identifying follow-on papers as “new” results in a new application serial number being generated. When filing a PCT, be sure to attach form RO/101, to use A4 size paper and, when filing 35 USC § 371 National Stage application, be sure to provide the correct PCT Application Number. Submit black and white images with a resolution no larger than 300X300 dpi. 4/15/2017

52 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. When filing a utility or plant application consider filing a conspicuous request for nonpublication if the invention has not been and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication Consider using using PTO form PTO/SB/35 to request nonpublication. A nonpublication request after filing is not permitted. 4/15/2017

53 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. Double check this information prior to filing since the documents provide the data used for publication. Republication for Applicant’s mistake requires payment of a fee. If practitioner does not include assignment info in transmittal letter or ADS the publication will not contain such information. File timely requests that identify the materiality of the errors. 4/15/2017

54 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. 4/15/2017

55 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. The request must accompany the Notice of Appeal or it will not be considered. File a request only in an application were no outstanding after-final amendment or other argument was previously submitted File only five additional pages with the cover form. It does not matter what is on the pages. The Technology Center counts the pages and if there are over five, the request is dismissed. Supplemental requests will not be treated. Request that the previously paid Notice of Appeal fee be reapplied for the current Notice of Appeal. If prosecution is reopened and another final rejection is made, there is no need for a second Notice of Appeal fee if the application is again appealed. 4/15/2017

56 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. 4/15/2017

57 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). A certificate of mailing under 1.8 may be used by practitioners in the United States, but this option is not available to practitioners filing documents in the US from another country. 4/15/2017

58 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) ). The security guard will call the Office of Petitions, located on the 7th floor, at (571) for delivery assistance. Hand carried papers will be accepted on business days between the hours of 8:30 a.m. and 3:45 p.m. 4/15/2017

59 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 4/15/2017

60 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 4/15/2017

61 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 4/15/2017

62 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 4/15/2017

63 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 4/15/2017

64 Patent Prosecution Highway (PPH)
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 4/15/2017

65 75 applications volunteered TC 2100 technology only
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) 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 4/15/2017

66 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 4/15/2017

67 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: 18 193 patents have issued (8/19/08) Participants’ response & comments positive Not only faster, but high quality 4/15/2017

68 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 4/15/2017

69 External Quality Metrics
USPTO working with external customers to develop quality metrics of relevance Future stakeholders surveys 4/15/2017

70 Quality is a shared responsibility
Applicant Quality Submissions (AQS) Quality is a shared responsibility “Applicants (and attorneys) must take responsibility for quality application preparation and prosecution and not rely solely on the examiner.” 4/15/2017

71 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. . . 4/15/2017

72 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. 4/15/2017

73 New EFS-Web system launched March 2006
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 4/15/2017

74 Electronic filing Safe, Simple, Secure Many corporations, law firms, and independent inventors moving to 100% electronic filing for new applications and follow-on papers. 4/15/2017

75 APPENDIX BEST PRACTICES

76 Priority Document Exchange Tips
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. We are seeing submissions for permissions for access that do not have a proper power of attorney, this if often seen in provisional applications. 4/15/2017

77 Fee Payment Tips Best Practices
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. 4/15/2017

78 Fee Payment Tips Best Practices
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 A common error arises when a customer number is used on an authorization transmittal sheet, rather than a deposit account number. We also see contradictory statements on transmittal sheets, such as “fee not provided”, yet there is a blanket authorization statement to charge a deposit account for any fees under 1.16 or 1.17. 4/15/2017

79 Maintenance Fees/Deposit Accounts
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 Inquiries related to deposit accounts, maintenance fees and refunds may be directed to the Office of Finance (571) 4/15/2017

80 Prosecution Tips Best Practices
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. 4/15/2017

81 Prosecution Tips (cont’d)
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. 4/15/2017

82 Recent Notices and Pre-OG Notices are posted at: http://www. uspto
4/15/2017

83 USPTO Useful Web Links - http://www.uspto.gov
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): 4/15/2017

84 USPTO Useful Web Links (cont’d)
Further Information USPTO Useful Web Links (cont’d) Mailing Addresses and Mail Stops: Facsimile Numbers: USPTO Glossary: 4/15/2017


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