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Prosecution Luncheon Patent January 2017

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Presentation on theme: "Prosecution Luncheon Patent January 2017"— Presentation transcript:

1 Prosecution Luncheon Patent January 2017

2 New Post-Prosecution Pilot (P3)
Combines features Pre-Appeal Brief Review Conference Pilot (Pre-Appeal) After Final Consideration Pilot Program (AFCP) Post-Prosecution Pilot (P3) Submit Proposed After Final Amendment for Consideration by a Panel of Examiners Opportunity to Present to Panel (in person/phone) Panel Provide Brief Written Summary Claim status Reasoning for maintaining rejection See, Program Over! Limit Reached January 12, 2017

3 eMod Text Pilot Program
eMod = Future EFS & PAIR Benefits Upload Applications (and other documents eventually) as Word/text documents (.docx) Download documents as Word/text documents (e.g., Office Actions) eMod Pilot Program Open BUT need to apply to the whole customer number

4 eMod Text Pilot Program- Requirements
Access to EFS-Web. Registered eFiler- opted into the eMod Text Pilot Program via Customer Number. Registered eFilers may save a submission as a work-in-progress for up to 7 days. Text intake feature Only available for new Utility Nonprovisional submissions. Unavailable for all other submission types. All required fields must be completed in order to proceed with the submission. The required fields are indicated with an asterisk.

5 eMod Text Pilot Program- Requirements
Open XML Word Processors (.docx) Microsoft Word 2007 or higher Google Docs Office Online LibreOffice Pages for Mac Specification, Claims, and Abstract submitted as text (separately?)

6 eMod Text Pilot Program- EFS

7 eMod Text Pilot Program- EFS
Warning Messages (yellow) for: Track changes, Comments* Bookmarks* Hidden Items* Continuous line numbering* Text decorations* Unused invalid fonts* Unnecessary document properties* *The system will automatically make changes to the document.

8 eMod Text Pilot Program- EFS
Warning Messages (yelllow) for: Abstract word count over 150 Unsupported OLE Objects (Supported OLE Objects include Visio.Drawing 11, Equation.DSMT4, ACD.ChemSketch.20, ChemDraw.Document.6.0, Equation.3)

9 eMod Text Pilot Program- EFS
Unable to Proceed further (red warning): Duplicate application parts Invalid Page Size – cannot exceed Letter or A4 Contains Content control Contains Custom XML Invalid font

10 eMod Text Pilot Program- EFS
Valid/Recommended Fonts: Georgia Times New Roman Arial Arial Black Arial Narrow Arial Rounded MT Bold Tahoma Verdana Trebuchet MS Courier New Calibri

11 eMod Text Pilot Program- PAIR

12 eMod Text Pilot Program- EFS
Download Outgoing Correspondence (e.g., Office Actions)

13 BREXIT & European Unitary Patent and Unitary Patent Court
UK government has confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement. (28-Nov-2016)

14 Inauguration- USPTO Changes
USPTO Political Appointees Will Resign by Inauguration (Jan 20, 2017) Director- Michelle Lee??? Deputy Director- Russ Slifer Chief of Staff- Vikrum Aiyer Chief Communications Officer- Patrick Ross (Jan 19) Plus a few others Commissioner for Patents- Drew Hirshfeld will then be Acting Director for the USPTO.

15 India Changes India’s new law is now similar to Australia in that they have a date of 6 months (previously 12 months) from the first official action for putting an application in order for grant. There is an extendable period of 3 months, if the extension of time & fee is paid before the expiration of the 6 months’ time. Docketing 6-month deadline for the application to be in order for grant. 1-month from the mail date of the examination report to respond to the examination report (“instructions due – soft deadline”).

16 India Changes Previously in India, the claims could not be amended at the time of the national phase entry. Under the new law, deletion of claims is now allowed at the time of the national phase entry to reduce the filing costs. However, no changes to the specification or additional claims may be added at the time of entry.

17 Prosecution Luncheon Patent January 2017


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