1. Recent Patent-Related Rule Making and Changes in USPTO Practice
July 29, 2003
Recent Patent-Related Rule Making and Changes in USPTO Practice
Joni Y. Chang
Legal Advisor
Office of Patent Legal Administration (OPLA)
(703) ,
July 29, 2003

2. TOPICS Rule Making/ Notices: Image File Wrapper (IFW) – Final Rule
July 29, 2003
TOPICS
Rule Making/ Notices:
Image File Wrapper (IFW) – Final Rule
Information Disclosure Statement (IDS)
Revised Amendment Practice
Elimination of CPA Practice – Final Rule
Notice of Foreign Filing
Reexamination Guidelines
Clarification of Power of Attorney Practice, and Revisions to Assignment Rules – Notice of Proposed Rule Making
Customer Number Bar Code Labels
Batch Updates
July 29, 2003

3. Image File Wrapper (IFW) – Final Rule
Effective date: July 30, 2003
Changes to Implement Electronic Maintenance of Official Patent Application Records, 68 Feg. Reg (June 30, 2003)(final rule).
July 29, 2003

4. IFW Implementation
The Office is implementing the Image File Wrapper (IFW) system which is an image technology system for storage and maintenance of records associated with patent applications.
Paper components of the application file contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications will be scanned into the IFW system as electronic image files.
All processing and examination will be performed with the electronic image files, instead of paper source documents, by all Office personnel.
July 29, 2003

5. IFW Implementation (Continued)
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).
July 29, 2003

6. IFW Implementation (Continued)
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.
July 29, 2003

7. IFW Implementation (Continued)
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
July 29, 2003

8. IFW Implementation (Continued)
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.
July 29, 2003

9. IFW Implementation (Continued)
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.
July 29, 2003

10. IFW Rule Making
The Office received 20 written comments from intellectual property organizations, law firms, and patent practitioners in response to the notice of proposed rulemaking.
The comments are posted at
July 29, 2003

11. 37 CFR 1.3, 1.59, and 1.99
The rules have been revised to eliminate Office’s return of certain papers.
As part of the implementation of IFW, the original paper will be disposed in accordance with a record retention schedule after scanning.
July 29, 2003

12. 37 CFR 1.9 and 1.14
Section 1.9, “Definitions”, has been amended to clarify that the word “paper” and “papers” refer to a document or documents, which may be electronic records or physical paper sheet(s).
Section 1.14, “Patent applications preserved in confidence”, has been revised to provide clarity and expand the rule to provide for electronic files.
July 29, 2003

13. 37 CFR 1.14(a)
Separate paragraphs in §1.14(a) were established to state what access or information is available in specific situations:
Patented applications and statutory invention registrations (SIR). (§1.14(a)(1)(i))
Published abandoned applications. (§1.14(a)(1)(ii))
Published pending applications. (§1.14(a)(1)(iii))
Unpublished abandoned applications (including provisional applications) that are identified or relied upon. (§1.14(a)(1)(iv))
Unpublished pending applications (including provisional applications) whose benefit is claimed. (§1.14(a)(1)(v))
Unpublished pending applications (including provisional applications) that are incorporated by reference, or otherwise identified. (§1.14(a)(1)(vi))
July 29, 2003

14. 37 CFR 1.14 Request for Access under 37 CFR 1.14(a)(1)(iv)
Applicants are encouraged to use Form PTO/SB/68 which has been revised to include explanatory notes concerning when access is available.
July 29, 2003

15. 37 CFR 1.14(b) Electronic access to an application
Where a copy of the application papers or access to the application is available pursuant to §§ 1.14(a)(1)(i) through 1.14(a)(1)(vi), the Office may at its discretion provide access only to an electronic copy of the file contents of the application.
July 29, 2003

16. 37 CFR 1.52 Papers must not be permanently bound
Papers must be readily separable for scanned entry into the image system.
The use of binder clips or standard office staples will generally be acceptable.
July 29, 2003

17. 37 CFR 1.52
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.
July 29, 2003

18. 37 CFR 1.72
Elimination of the prohibition on using the abstract to interpret the claims
§1.72(b) has been amended to delete the last sentence in the rule (“The abstract will not be used for interpreting the scope of the claims.”) to be consistent with Hill Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.*, 54 USPQ2d 1437, 1440 n.1 (Fed. Cir. 2000).
July 29, 2003

19. 37 CFR 1.98 Electronic Information Disclosure Statement (eIDS)
Section 1.98 has been amended to provide that the requirement for a copy of U.S. patents and U.S. application publications does not apply to any IDS submitted electronically in compliance with the Office’s EFS. Also see 1262 OG 94 (9/17/02).
Only U.S. patents and application publications may be submitted with eIDS.
eIDS may be submitted with original application or later.
eIDS may be submitted even where application was not submitted by EFS.
July 29, 2003

20. 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, (signed July 11, 2003). The Pre-OG Notice is available at
July 29, 2003

21. 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).
July 29, 2003

22. Revised Amendment Practice 37 CFR 1.121
July 29, 2003

23. Revised Amendment Practice
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 is posted on the USPTO’s website at
July 29, 2003

24. Revised Amendment Practice (Continued)
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.
July 29, 2003

25. Revised Amendment Practice (Continued)
Highlights:
Each section of an amendment paper must start on a separate sheet.
For example: each of the following sections must start on a separate sheet: Introductory comments, Amendments to the Specification, Amendments to the Claims, Amendments to Drawings, and Remarks.
Submit only one version of the replacement paragraph or section, or currently amended claims, with markings (i.e., strikethrough, double brackets [[ ]], or underlining), to show the changes relative to immediate prior version.
The requirement to provide a clean version has been eliminated, except when applicant submits a substitute specification.
July 29, 2003

26. Amendments to Claims
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.
July 29, 2003

27. Amendments to Claims (Continued)
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.
The claims in the listing (in the current amendment) will replace all prior versions, and listings, of claims in the application.
July 29, 2003

28. Amendments to Claims (Continued)
The seven (7) permissible status identifiers and their definitions, are:
(Original): Claim filed with original specification (not added by preliminary amendment and not previously amended).
(Currently amended): Claim being amended in the current amendment. Currently amended claims must include markings (strikethrough, double brackets, or underlining) to indicate changes.
(Canceled): Claim canceled or deleted in current amendment or previously. Do not present the text of a canceled claim. Consecutive canceled claims may be grouped together (e.g., claims 1-5 (canceled)).
July 29, 2003

29. Amendments to Claims (Continued)
Seven (7) permissible status identifiers (cont.):
(Withdrawn): Non-elected claim.
The text of a withdrawn claim must be presented.
Withdrawn claims that are being currently amended must be presented with markings (strikethrough, double brackets, or underlining) to indicate changes.
Example: Claim 8 (withdrawn) The handle of claim 7[[6]] further comprising a plastic grip.
(Previously presented): This is a generic identifier to cover any claim that was previously added or amended in an earlier amendment paper.
The proposed identifiers “previously amended” or “previously added” were not adopted, and must not be used.
July 29, 2003

30. Amendments to Claims (Continued)
Seven (7) permissible status identifiers (cont.):
(New): Claim being added in the current amendment paper. The text of the claim must be presented in clean form without underlining.
(Not entered): Claim presented in a previous unentered amendment.
Do not present the text of a not entered claim.
Consecutive not entered claims may be grouped together (e.g., Claims (not entered)).
If in doubt as to whether a prior amendment was entered, the claim should be presumed to be “not entered”.
July 29, 2003

31. Amendments to Claims (Continued)
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.
July 29, 2003

32. Amendments to Claims (Continued)
The listing of claims must comply with the following:
A status identifier for each claim is required.
Multiple status identifiers must not be used for any single claim.
The text of all claims being currently amended must be presented with markings to show changes relative to immediate prior version.
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).
July 29, 2003

33. Amendments to Claims (Continued)
July 29, 2003
Amendments to Claims (Continued)
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.”
July 29, 2003

34. Amendments to Claims (Continued)
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.
July 29, 2003

35. Revised Amendment Practice (Continued)
Markings to Show Changes:
Replacement paragraphs or sections, replacement abstracts, currently amended claims, and substitute specifications, must include markings to show all changes relative to the immediate prior version.
Added text must be shown by underlining.
Deleted text must be shown by strikethrough (e.g., strikethrough), with 2 exceptions:
For deletion of five or fewer consecutive characters, double brackets [[ ]] may be used (e.g., [[eroor]]); and
If strikethrough cannot be easily perceived, deleted text must be shown by double brackets [[ ]] around the deleted text characters.
For example: changing “4 corners” to “three corners” should be indicated by “three[[4]] corners”.
July 29, 2003

36. Revised Amendment Practice (Continued)
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”
July 29, 2003

37. Amendments to Specification
The location of the paragraph or section to be deleted or replaced, or where a new paragraph or section is to be added, must be unambiguously identified.
The location can be identified by using a few words at the beginning and/or the end of the paragraph or section.
Do not underline the text of a new paragraph or section.
Deletion of a paragraph or section must only include an instruction to delete, and the location of the paragraph or section.
Replacement paragraph or section must be a marked-up version showing the changes.
A clean version of any replacement paragraph or section must not be submitted in addition to a marked up version, except when applicant submits a substitute specification.
July 29, 2003

38. Amendments to Abstract
An amendment to an abstract is treated like an amendment to the specification.
If the changes are minor in nature, submit a replacement abstract with markings to show all changes relative to the immediate prior version.
If the abstract is being substantially rewritten, submit a new abstract in clean text (no markings) accompanied by an instruction for the cancellation of the previous abstract.
Any new, or replacement, abstract must be submitted on a separate sheet (37 CFR 1.72).
July 29, 2003

39. Substitute Specification
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.
July 29, 2003

40. Amendments to Drawings
Amendment to drawings must include:
Replacement drawing sheet showing amended figures which include the desired changes, without markings, on a separate sheet in compliance with §1.84; and
Explanation of the changes in the remarks, or preferably, in the drawing amendments section, of the amendment paper.
Optional unless required by examiner:
Annotated drawing sheet – a marked-up copy of the amended figure(s) with annotations showing the change(s) may be submitted, or required by the examiner.
July 29, 2003

41. Amendments to Drawings (Continued)
July 29, 2003
Amendments to Drawings (Continued)
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).
July 29, 2003

42. Amendments to Drawings (Continued)
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.
July 29, 2003

43. Amendments to Drawings (Continued)
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.
July 29, 2003

44. Amendments to Drawings (Continued)
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.
July 29, 2003

45. After Final Amendments
Any amendment after final (§1.116), or amendment filed with a request for continued examination (RCE) under §1.114, must include markings showing the changes relative to the last entered amendment.
Do not include markings to show changes relative to any unentered amendment.
Applicant should not assume that an after final amendment is entered because after final amendments are not entered as a matter of right (§1.116).
July 29, 2003

46. After Final Amendments (Continued)
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.
July 29, 2003

47. After Final Amendments (Continued)
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).
July 29, 2003

48. Non-Compliant Amendments
Treatment of
Non-Compliant Amendments
Applicants will be notified of any amendment paper that is not accepted because the changes do not comply with revised §1.121.
For preliminary amendments and replies to non-final Office actions or notices,
A Notice of Non-Compliant Amendment identifying the problem section(s) will be mailed; and
A period for reply shall be given; but
Patent term adjustment (PTA) reductions may be incurred. See §1.704(c)(7).
For after-final amendments,
Non-compliance will be indicated in an advisory action; and
The time period for reply continues to run from the mailing date of the final Office action.
See MPEP (8th Ed. 1st Rev., Feb. 2003).
July 29, 2003

49. Non-Compliant Amendments (Continued)
Treatment of
Non-Compliant Amendments (Continued)
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
July 29, 2003

50. Example Non-compliant claim amendment example:
If an amendment includes:
(1) amendments to the specification, and
(2) amendments to the claims, including adding new claims 21 – 25,
But the amendments to the claims were non-compliant,
Because the claim listing did not include a status identifier for each claim,
A Notice of Non-Compliant Amendment will be mailed.
July 29, 2003

51. Example (Continued) 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.
July 29, 2003

52. Example (Continued) Non-compliant claim amendment example continued:
The Office would enter:
The amendments to the specification from the original amendment paper, and
The amendments to the claims that include the corrected claim listing from the paper filed in reply to the Notice.
July 29, 2003

53. International Applications
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.
July 29, 2003

54. 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).
July 29, 2003

55. Elimination of CPA Practice
Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications.
Any CPA filed in a utility or plant application that was filed on/after June 8, 1995 will be treated as a request for continued examination (RCE) under §1.114.
Note: If the request for a CPA does not satisfy all of the RCE requirements under §1.114, the request will be treated as an improper RCE.
Any CPA filed in a utility or plant application that was filed before June 8, 1995 will be treated under 37 CFR 1.53(e) as an improper application.
CPA practice remains in effect for design applications.
July 29, 2003

56. 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).
July 29, 2003

57. Notice of Foreign Filing
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.
July 29, 2003

58. Notice of Foreign Filing (Continued)
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.
July 29, 2003

59. Notice of Foreign Filing (Continued)
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.
July 29, 2003

60. 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).
July 29, 2003

61. Reexamination Guidelines
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).
Permitting 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.
July 29, 2003

62. 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)(proposed rule)
Available on the USPTO web site at:
Comments may be sent to and must be received by August 26, No public hearings are scheduled.
July 29, 2003

63. 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)
July 29, 2003

64. Customer Number Practice MPEP 403 (8th Ed. 2001) (Rev. 1, Feb 2003)
Customer Numbers (previously "Payor Numbers") may be used to:
Submit a list of practitioners by Customer Number such that an applicant or an assignee may in a Power of Attorney appoint those practitioners associated with the Customer Number;
Designate the correspondence address of a patent application by a Customer Number such that the correspondence address for the patent application would be the address associated with the Customer Number; and
Designate the fee address ( 37 CFR 1.363) of a patent by a Customer Number such that the fee address for the patent (for maintenance fee notices) would be the address associated with the Customer Number.
July 29, 2003

65. Customer Number Practice (Continued) MPEP 403 (8th Ed. 2001) (Rev
Customer Number Practice (Continued) MPEP 403 (8th 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.
July 29, 2003

66. 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)
The Pre-OG Notice is available at
July 29, 2003

67. 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
July 29, 2003

68. Batch Updates
Notice of Elimination of Batch Update Practice to Change Power of Attorney, 1272 Off. Gaz. Pat. Office 24 (July 1, 2003).
July 29, 2003

69. 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
July 29, 2003

70. Further Information Contacts
July 29, 2003
Further Information Contacts
Revised Amendment Practice – Image File Wrapper einfoamdtprac.htm
Image File Wrapper -
Recent Patent-Related Notices (published in O.G., F.R., etc.)-
Questions of a General Nature - Inventors Assistance Center PTO(786)-9199
Electronic Business Center – Customer Numbers, PAIR, EFS - or (703)
17 States and 1 Regional Office have taken this reservation
BY Belarus
CA Canada
CN China
DE Germany
EP European Patent Organization (EPO)
GB United Kingdom
HR Croatia
IN India
JP Japan
KR Republic of Korea
LV Latvia
MX Mexico
NZ New Zealand
PH Philippines
PL Poland
PT Portugal
SG Singapore
YU Yugoslavia
July 29, 2003

71. Check the USPTO web site for important announcements
July 29, 2003
Check the USPTO web site for important announcements
changed
New
July 29, 2003

72. Revised Amendment Practice Web Page
July 29, 2003
Revised Amendment Practice Web Page
changed
July 29, 2003

73. Image File Wrapper Web Page
July 29, 2003
Image File Wrapper Web Page
changed
July 29, 2003

74. Recent Patent-Related Notices
July 29, 2003
Recent Patent-Related Notices
changed
July 29, 2003

75. July 29, 2003
Information Contacts
Office of Patent Legal Administration – (703) or 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)
Electronic Filing, CDs – Michael Lewis (703) or Jay Lucas (703)
July 29, 2003

76. Thank You
July 29, 2003