1. Patents Ombudsman Program Top Inquiries for 2016
Presenter:
Dale Shaw
Office of Stakeholder Outreach and
Patents Ombudsman
Date: February 3, 2017

2. Ombudsman Program - Purpose
Facilitate complaint handling when applications become stalled in the examination process
Track complaints to ensure each is handled within 10 business days
FY 2016 averaged 6.2 business days
Provide feedback regarding training needs based on complaint trends

3. PATENTS OMBUDSMAN PROGRAM 3

4. Ombudsman Program - Process

5. Regional Offices
Thanks to our Regional Offices Service Hours are 8:30 AM-8PM ET.

6. Ombudsman Program
The Program is not pro-Office or pro-customer. The Program is pro-process.
The Program is not a replacement for the Appeal or Petition process.
The Program can be of assistance when the application is hung up in the process.

7. Ombudsman Program Total Inquiries
Fiscal Year
Inquiries
2010
268
2011
372
2012
951
2013
4292
2014
5469
2015
4859
2016
4119

8. Top Inquiries for 2016 Status Inquiries Fees Filing
Case Prosecution Concerns
Petitions
Provisional Apps.
General Questions
Fees
First Office Action
Estimate (FOA)
Customer Service
Corrected Filing Receipt
Publication
Power of Attorney (POA) 8

9. Status Inquiries
PAIR -Status can be determined at both Public and Private PAIR
Best Place for Status Information
Examiner/SPE
Application Assistance Unit
Finance
Other BUs
Ombudsman Program 9

10. First Office Action Estimator 10

11. First Office Action Estimator11

12. Filing Procedural Guidance How do you this? How do I fix this?
What’s needed for this case?
Who do I contact? 12

13. Filing Application Data Sheet and Declaration
Petition and Terminal Disclaimer
Non-receipt of Correspondence 13

14. Application Data Sheets
Original ADS
Missing priority data
Corrected ADS (for applications filed on/after September 16, 2012)
New electronic form
In the Originally filed ADS forms the issue that we are see the most concerns missing priority data. Whoever is filing out the ADS form should be cautious. The only fix that may be available is the late claim for priority petition which is costly.
With Supplemental ADSs the issue has been making corrections showing the underlining for additions and strikethrough for deletions. 14

15. Tips for Application Data Sheets
Prior to filing an ADS, double check the listing of domestic benefit and/or foreign priority information (priority and benefit information is required to be in an ADS for applications filed on or after September 16, 2012) for:
Typos in application numbers
Incorrect filing dates
Wrong relationship type (e.g., CON vs. CIP, etc.) 15

16. Tips for Application Data Sheets
Be sure to indicate the correct relationship and order of the domestic benefit applications listed on the ADS. If the order is incorrect, then the Office of Patent Application Processing (OPAP) may not accurately capture the entire benefit claim.
Make sure the information in the filing receipt you receive is correct. In particular, check your filing receipt promptly to make sure that:
all domestic benefit and/or foreign priority claims have been accurately captured and
the presence or absence of a § 1.55/1.78 statement has been accurately captured.
If any information you provided on the ADS was not accurately captured by the USPTO, file a request for a corrected filing receipt. 16

17. Application Data Sheets
Correcting or updating information is done by an ADS with markings (§ 1.76(c)(1)):
Such an ADS is no longer considered or called a “Supplemental ADS.”
A “corrected or updated” ADS may include:
All sections listed in § 1.76(b), or
Only those sections containing changed or updated information (§ 1.76(c)(2)):
All information in the section must be provided, with identification of what has changed in the section, except for an initial 35 U.S.C. 371 submission:
Underlining for insertions, strike-through or brackets for deletions. 17

18. Tips for Application Data Sheets
A corrected ADS (for applications filed on or after September 16, 2012) must be marked up as set forth in 37 CFR 1.76(c).
A corrected ADS showing changes relative to the information of record is required regardless of whether an ADS has been previously filed or not.
The corrected ADS will not be processed unless markings showing the changes are provided.
For more information on a corrected ADS see MPEP (a).
Let’s now take a look at corrected Application Data Sheets.
A corrected ADS (for applications filed on or after September 16, 2012) must be marked up as set forth in 37 CFR 1.76(c)
The marking on a corrected ADS must show the changes relative to the information of record will not be processed.
So, even if no previous ADS has been filed, marks should be present to show changes relative to the information of record.
The reason is that the office would not know which information to update in the record if the ADS is not marked up. 18

19. Tips for Application Data Sheets
Scenario for correcting an ADS:
Initial filing receipt shows no domestic benefit claims because they were incorrectly entered on the initial ADS. The initial ADS contained the following information:
Claims benefit of
13/“parent”
13/“parent”
a 371 of international
PCT/CA2012/XXXXX
PCT/CA2012/XXXXX
Continuation of
61/XXX,XXX 19

20. Tips for Application Data Sheets
Scenario for correcting an ADS:
Initial filing receipt shows no domestic benefit claims because they were incorrectly entered on the initial ADS. An appropriate and timely, corrected ADS with markings
to show changes relative to the information of record, as shown below, will be effective.
Continuation of
13/“parent”
Here is an example of a corrected ADS with markings to show changes relative to the information of record. Notice all the entries are underlined.
13/“parent”
a 371 of international
PCT/CA2012/XXXXX
PCT/CA2012/XXXXX
Claims benefit of provisional
61/XXX,XXX 20

21. Tips for Application Data Sheets
Scenario for correcting an ADS:
Where information of record is being changed, the ADS should identify the information being deleted with strike-through or brackets, and should identify the information being added with underlining.
Continuation of Division of
13/“parent”
13/“parent”
a 371 of international
PCT/CA2012/XXXXX
PCT/CA2012/XXXXX
Claims benefit of provisional
61/XXX,XXX 21

22. Tips for Application Data Sheets
A corrected ADS should be accompanied by a properly identified/indexed paper requesting action, such as,
a request for a corrected filing receipt or
a request to correct inventorship (§ 1.48 request)
a request to change the applicant (under § 1.46(c))
Information regarding proper indexing of papers can be found at the following three web sites: 22

23. “Take Home”
Make sure the information in the filing receipt you receive is correct. In particular, check your filing receipt promptly to make sure that:
all domestic benefit and/or foreign priority claims have been accurately captured and
the presence or absence of a § 1.55/1.78 statement has been accurately captured.
As explained, the AIA indicator will be set on the information provided by the applicant. Incorrectly captured or inaccurate information may cause the AIA indicator to be improperly set. Therefore, it is important to promptly check your filing receipts. Make sure that information in the filing receipt is correct. 23

24. “Take Home”
If any information you provided on the ADS was not accurately captured by the USPTO, file a request for a corrected filing receipt.
If review of the filing receipt and the ADS identifies applicant errors, file both:
a request to correct the filing receipt and
a corrected ADS 24

25. Enhanced Web Based ADS
The Web-based ADS is only displayed for new Utility and Design applications. It is currently not available for International or existing applications, or Supplemental Examination proceedings.
To access the Web-based ADS, select the second radio button, “Web-based ADS.” This will expand the web screen and display the Web-based ADS fields. 25

26. Enhanced Web Based ADS
Option to pre-populate application information based on a previously filed application.
Data may be retrieved for:
Registered eFilers who have power of attorney in the parent application; or
Both registered and non-registered eFilers if the parent application is made available to the public, i.e. published or patented.
The first step is to enter the application and confirmation number of the parent application, then click the “Show” button. Bibliographic information of the entered application number is displayed for verification purposes. 26

27. Domestic Benefit/National Stage Information
Enhanced Web Based ADS
After verifying the bibliographic information, then the options to populate the following sections are available:
Inventor Information
Domestic Benefit/National Stage Information
Foreign Priority Information
Check the appropriate boxes and click Retrieve. 27

28. Enhanced Web Based ADS 28

29. Enhanced Web Based ADS
These steps may be repeated to retrieve data from multiple applications to create multiple chains of priority.
When retrieving Domestic Benefit/National Stage Information the entered parent information will be used as the first claim entry to the current application. You must enter the continuity type and status information for each application for which retrieval is requested. 29

30. Enhanced Web Based ADS
In the Inventor Information section, the required fields are indicated by an asterisk. You will not be able to proceed if a required field is missing.
If more than one inventor is entered, the order can be changed by renumbering. Make sure each number is used only once. 30

31. The correspondence section is a required section.
Enhanced Web Based ADS
The correspondence section is a required section.
A Customer Number or an address must be entered. The default field is the Customer Number.
Registered eFilers will be able to select a Customer Number from the drop down menu or enter a Customer Number.
Unregistered eFilers will only be able to enter a Customer Number or if they do not have a Customer Number, select the checkbox and the section will expand to allow an address to be entered. 31

32. Petitions Withdrawal of Abandonment
Revival of applications considered abandoned
[Background for Presenter not to be read as part of the lecture – Requests to withdraw abandonment are not petitions in that there is no rule that applicant is asking us to consider. We are just looking to see if some thing has been overlooked or lost.
There are three types of petitions that we get here at USPTO. The first is one where someone is asking us to review our rules and procedures and exercise our supervisory capacity over our employees, the second is for us to review situations not covered by the rules and the final type of petition is requests for us to waive a rule.] 32

33. Withdrawal of Abandonment
Non-receipt of Correspondence
You did not get our Office action
We did not receive your response
Fact Specific, MPEP (c)(I) 33

34. Petitions Relating to Abandonment
Withdrawal of Holding of Abandonment - “I never got the Office action.”
Delgar v. Schulyer, 72 USPQ 513 (D.D.C. 1971) showing:
statement from the practitioner describing the system used for recording an Office action received at the correspondence address of record with the USPTO. The statement should establish that the docketing system is sufficiently reliable. It is expected that the record would include, but not be limited to, the application number, attorney docket number, the mail date of the Office action and the due date for the response.
statement from Practitioner that the Office action was not received at the correspondence address of record, and that a search of the practitioner’s record(s), including any file jacket or the equivalent, and the application contents, indicates that the Office action was not received. A copy of the record(s) used by the practitioner where the non-received Office action would have been entered had it been received is required. A copy of the practitioner’s record(s) required to show non-receipt of the Office action should include the MASTER DOCKET for the firm. That is, if a three month period for reply was set in the nonreceived Office action, a copy of the master docket report showing all replies docketed for a date three months from the mail date of the nonreceived Office action must be submitted as documentary proof of nonreceipt of the Office action.
If no such master docket exists, the practitioner should so state and provide other evidence such as, but not limited to, the following: the application file jacket; incoming mail log; calendar; reminder system; or the individual docket record for the application in question. 34

35. Petitions Relating to Abandonment
Petition for Withdrawal of Holding of Abandonment (cont.)
Certificate of Mailing Practice: Rule 1.8 (MPEP 512)
inform the Office of the previous mailing/transmission promptly after becoming aware that the Office has no evidence of receipt of the correspondence
supply an additional copy of the correspondence
include a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing/transmission
if correspondence was sent by facsimile, a copy of the sending unit’s report confirming transmission may be used to support this statement
If the correspondence was transmitted via the Office electronic filing system, a copy of an acknowledgment receipt generated by the Office electronic filing system confirming submission may be used to support this statement.
NOTE: The certificate of mailing or transmission cannot be relied on to obtain a filing date. 35

36. Petitions Timeline
Specifies the types of petitions that can be filed during the various stages of prosecution
Hyperlinks to pendency data, historical grant rates and deciding official
Links to the Manual of Patent Examining Procedure 36

37. e-Petition
Situations covered under the rules where the facts are straight forward, no discretion
PDF –Versions
Age
Unintentionally delayed Payment of Maintenance Fee
Web-based Versions
Petition for Revival
Withdraw from Issue
Withdrawal as Attorney
Late payment of Issue Fee
Unintentionally Delayed Payment of Maintenance Fee
Use ePetition to for revival of abandoned applications. Faster processing since decision is rendered instantaneously. 37

38. e-Petition Web-based form Must be a registered EFS-Web filer
Payment required at time of submission
Automatically processed 38

39. e-Terminal Disclaimer
Similar to e-Petition
Web-based form
Must be a registered EFS-Web filer
Payment required at time of submission
Automatically processed
Note: for applications filed on/after September 16, 2012, the terminal disclaimer must identify the applicant as the party who is disclaiming. If the assignee is not the applicant, then the assignee must become the applicant for the terminal disclaimer to be proper. 39

40. Filing What forms should be used Corrected Filing Receipts
Power of Attorney
Both Registered practitioners and their staff call the Ombudsman Program as well as applicants filing on their own
Pro se applicants are most likely to call and ask about the form that they should be using 40

41. Corrected Filing Receipt
What is the status and when is the corrected filing receipt going to be mailed
Data correction
Corrected ADS
Check the Priority Data
Follow the guidelines for submitting the corrected ADS noting that additions are underlined and deleted text is indicated by strikethrough. 41

42. Case Prosecution Concerns
Clarity and Consistency of Examination Practice
Try to resolve it with the examiner or SPE first
Call or the Patents Ombudsman
Premature finals
Re-openings after final or notice of appeal
Restriction practice
Sometimes thing do breakdown so the Patents Ombudsman Program is a place that you can turn to for assistance.
It is all about the examination process and getting applications to move through the process 42

43. Provisional Applications
Mostly Pro se applicants
Why is the provisional application abandoned?
Wants the status of the application.
Can I amend my provisional application for patent? 43

44. General Questions/Customer Service
How to change address or get a customer number
Filing requirements 44

45. Financial Manager Manage Stored Payment Methods Assign Permissions
Receive Notifications
Generate Reports
New Financial Manager and Maintenance Fee Store Front launched in April 2016.
A new, easy to use online fee payment management system.
Request for refunds must still be submitted. Ombudsman can assist in tracking down a request. 45

46. Publications Application not moving Abandonment Revival use ePetition
Oath or Declaration missing
Statements under 37 CFR 3.73(c) or Pre-AIA 3.73(b) 46

47. Power of Attorney Power of Attorney not entered or processed
Changing the POA - will need the Statements under 37 CFR 3.73(c) or Pre-AIA 3.73(b)
PAIR Access
Power of Attorney gives the attorney access to the PAIR database, so POA must be up to date. 47

48. Power of Attorney 37 CFR 1.32(b)
For apps filed before 9/16/12
Power of Attorney 37 CFR 1.32(b)
For patent applications filed before September 16, 2012, 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. 48

49. Power of Attorney 37 CFR 1.32(b)
For apps filed on/after 9/16/12
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. 49

50. Acting in a Representative Capacity 37 CFR 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 50

51. Acting in a Representative Capacity 37 CFR 1.34
A person acting in a representative capacity may not sign:
A power of attorney;
A document granting access to an application unless
For an application filed before 9/16/12, an executed declaration has not been filed, and the practitioner was named in the papers accompanying the application papers, or
For an application filed on or after 9/16/12, the practitioner is named in the papers accompanying the application papers, and no power of attorney has been appointed;
A change in correspondence address except where an executed oath/declaration has not been filed and the practitioner filed the application (37 CFR 1.33(a)(1)), unless the patent has issued (37 CFR 1.33(g);
A terminal disclaimer; or
A request for an express abandonment without filing a continuing application. 51

52. Powers of Attorney: USPTO Forms
For apps filed on/after 9/16/12
Powers of Attorney: USPTO Forms
There are three power forms for use in patent applications filed on or after 9/16/12:
PTO/AIA/82 (power of attorney by applicant)
PTO/AIA/81 (power of attorney to one or more joint inventors)
PTO/AIA/80 (power of attorney by assignee who is becoming the applicant under § 1.46(c))
Information about the new powers is available on the USPTO web site at: 52

53. Thank You 53