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Recent Changes and Developments in USPTO Practice

Recent Changes and Developments in USPTO Practice. Prepared by: Office of Patent Legal Administration (OPLA) Robert J. Spar, Director Joni Y. Chang Director Legal Advisor (703) 308-5107 (703) 308-3858 Bob.Spar@USPTO.gov Joni.Chang@USPTO.gov. Legislative Change – Public Law 107-273.

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Recent Changes and Developments in USPTO Practice

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  1. Recent Changes and Developments in USPTO Practice Prepared by: Office of Patent Legal Administration (OPLA) Robert J. Spar, Director Joni Y. Chang Director Legal Advisor (703) 308-5107 (703) 308-3858 Bob.Spar@USPTO.govJoni.Chang@USPTO.gov

  2. Legislative Change – Public Law 107-273 • Subtitle A – Patent and Trademark Office Authorization Act of 2002 • Subtitle B – Intellectual Property and High Technology Technical Amendment Act of 2002 • Date Enacted: November 2, 2002 • Effective date for the changes to 35 U.S.C. § 102(e) is November 29, 2000

  3. Legislative Change – Public Law 107-273 • Permits reexamination on the basis of prior art that was previously cited by or to the USPTO or considered by the USPTO (Sec. 13105) • Permits third-party requesters in inter partes reexamination proceedings to appeal to the U.S. Court of Appeals for the Federal Circuit (Sec. 13106) • Makes technical changes title 35, U.S.C., to correct errors introduced by the American Inventors Protection Act of 1999 (AIPA) (Secs. 13201-06) • Includes corrections to 35 U.S.C. § 102(e) and its effective date (as provided in the AIPA)

  4. Regulatory Changes • Changes to Implement the 2002 Inter Partes Reexamination and other Technical Amendments to the Patent Statute (Pub. Law 107-273 (2002)) • Notice of proposed rulemaking is expected to be published by April, 2003 (with a 60-day public comment period). • Final rule is expected to be published by end of FY 2003. • Changes to Implement Electronic Maintenance of Official Patent Application Records • Notice of proposed rulemaking is expected to be published by March, 2003 (with a 30-day public comment period). • Final rule is expected to be published by July, 2003

  5. New Guidelines Permitting reexamination on the basis of prior art that was previously cited by or to, or considered by, the USPTO • The USPTO will publish new Reexamination (“Portola”) Guidelines in the Federal Register that supersede the Reexamination Guidelines published in March of 1999 (64 Fed. Reg. 15346). • The new Reexamination Guidelines will also be incorporated into MPEP 2242. • Congress has indicated that the purpose of this change is to overrule the Federal Circuit’s decision in 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. 2002).

  6. New Guidelines (continued) Permitting reexamination on the basis of prior art that was previously cited by or to, or considered by, the USPTO • This change to the substantial new question of patentability applies to any determination made on/after the date of enactment (Nov. 2, 2002). • The new Reexamination Guidelines will set out the conditions under which the USPTO will make a new determination in a pending reexamination to make a ground of rejection that may not have been permitted under the Reexamination Guidelines published in March of 1999.

  7. eBusiness Changes • Electronic Information Disclosure (eIDS) (1262 OG 94 (9/17/02)) • No need for copies of U.S. patents and application publications with eIDS submissions • 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 • eIDS automatically loads patent citations for examiner with EAST & WEST search tools

  8. Other O.G. Notices • The EPO will no longer be a competent International Searching Authority (ISA), within the meaning of PCT Article 16(3), for international applications filed by US residents or nationals on or after 01 March 2002 in the USPTO or International Bureau (IB) as receiving Office, and where the application contains one or more claims directed to the fields of biotechnology or business methods. (See Notice Concerning EPO Competence to Act as a PCT Authority, 1255 OG 878 (2/19/02)) • The USPTO will deny entry of any amendment (whether submitted with the filing of the application or after the filing date of the application) that seeks cancellation of all claims but does not present any new or substitute claims. (See Treatment of Amendments that if Entered Would Cancel All of the Claims in an Application, 1255 OG 827 (2/5/02))

  9. Other O.G. Notices • USPTO Announces Prototype of Image Processing (signed 11/19/02) 1265 OG 87 (12/17/02). • In December 2002, The USPTO commenced a prototype of electronic image processing of patent applications. Three art units in Technology Centers 1600 and 2800 will participate in this prototype, as well as sections of the Office of Initial Patent Examination (OIPE) and other related processing divisions. This prototype program will test the use of image technology to replace the standard paper processing of patent applications currently used in the USPTO. All processing and examination will be performed with the image files, instead of the paper source documents, by the examiners, technical support staff and all other USPTO professional staff during the prototype.

  10. Revised Amendment Format37 CFR 1.121 Prepared by: Office of Patent Legal Administration (OPLA) Robert J. Spar, Director (703) 308-5107 Bob.Spar@USPTO.gov

  11. Revised Amendment Format • Special Amendment Practice (limited to claims) begun in Prototype Electronic Image File Wrapper Program in Art Units 1634, 2827 & 2834. • See USPTO ANNOUNCES PROTOTYPE OF IMAGE PROCESSING, 1265 Off. Gaz. Pat. Office 87 (Dec. 17, 2002). • The special amendment practice has been readily accepted by prototype participants, is beneficial to examiners, and will improve patent printing process. • Effective immediately, a voluntary revised amendment format which applies to specification and drawings in addition to claims may be used in the prototype cases, and in all applications, except reissue and reexamination.

  12. Revised Amendment Format • Implementation Plan • OG Notice – announces a Revised Amendment Format and provides waiver of 37 CFR 1.121(a)-(d). • Pre-OG Notice posted on 1/31/03 at http://www.uspto.gov/web/offices/pac/dapp/opla/pregnotice/revamdtprac.htm • Notice to be published in OG Notices on 2/25/03. • Mailing of flyer describing the revised practice with every Office action. • Sample Revised Amendment Format to be posted on website.

  13. Revised Amendment Format • Implementation Plan (cont.) • Notice of Proposed Rulemaking – proposed changes to 37 CFR 1.121 to implement electronic maintenance of official patent application records; expected publication by March 2003. • Final Rule – a revised amendment format will become mandatory by a final rule making notice; expected publication by June, 2003. • Training of examiners and tech support staff to commence in early March, 2003.

  14. Revised Amendment Format • Highlights: • Each section of amendment paper must start on a separate sheet. • For example: each of the following must start on a separate sheet: Introductory comments, Amendments to the Specification, Amendments to the Claims, and Remarks. • Submit only one version of the replacement portion which includes strikethrough or underlining showing the changes relative to immediate prior version. • The requirement to provide a clean version and a marked up version is waived if revised amendment format is used (§1.121(b) and (c) are waived).

  15. Revised Claim Amendment Format • Highlights: • Amendment to claims must include a complete listing of all claims shown in ascending order. • The listing of claims (in the current amendment) will replace all prior versions, and listings, of claims in the application. • The requirement of a clean version is waived and a clean version should not be submitted.

  16. Revised Claim Amendment Format • 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 (strikethrough for deleted matter and underlining for added matter) relative to immediate prior version. • Only claims of the status “currently amended” will include markings. • All other claims under examination must be presented in clean text (without marking). • Any claim text presented in clean form (no markings) constitutes an assertion that it has not been changed relative to the immediate prior version.

  17. Revised Claim Amendment Format • Listing (cont.): • Canceled and withdrawn claims should only have “canceled” or “withdrawn” status identifier following the claim number and text should not be supplied. • New Claims must be presented with a “new” status identifier. • Do not underline the text of the new claims. • Grouping of Claims – consecutive canceled or withdrawn claims may be aggregated into one line (e.g., claims 1-5 (canceled).)

  18. Revised Claim Amendment Format • Example of a Listing of Claims: • Claims 1-5 (canceled) • Claim 6 (withdrawn) • Claim 7 (previously amended): A bucket with a handle. • Claim 8 (currently amended): A bucket with a blue green handle. • Claim 9 (original): The bucket of claim 8 with a wooden handle. • Claim 10 (new): A bucket with plastic sides and bottom.

  19. Revised Claim Amendment Format • Use only the following status identifiers in parentheses after claim number: • (Original): Claim filed with the original specification (not added by preliminary amendment). • (Currently amended): Claim being amended in the current amendment. Only currently amended claims should include markings (strikethrough and underlining) to indicate changes. • (Previously amended): Claim not being currently amended, but which was amended in a previous amendment paper. The claim should be presented in clean text. • (Canceled): Claim canceled or deleted. Do not present the text of the canceled claim. Consecutive canceled claims may be grouped together (e.g., claims 1-5 (canceled)). • (Withdrawn): Claim still in the application, but in a non-elected status. Do not present the text of the withdrawn claim. Consecutive withdrawn claims may be grouped together (e.g., claims 6-10 (withdrawn)).

  20. Revised Claim Amendment Format • Permissible status identifiers (cont.): • (Previously added): Claim added in an earlier amendment paper. • (New): Claim being added in the current amendment paper. • (Reinstated-formerly claim #__): Claim deleted in an earlier amendment paper, but re-presented verbatim with a new claim number in current amendment. • (Previously reinstated): Claim deleted in an earlier amendment and reinstated in an earlier amendment paper. • (Re-presented – formerly dependent claim # __): Dependent claim re-presented in independent form in current amendment paper. No additional (or new) subject matter may appear in these claims. • (Previously represented): Dependent claim re-presented in independent form in an earlier amendment, but not currently amended.

  21. Revised Specification Amendment Format • Amendments to the Specification: • Submit only one marked up version of any replacement paragraphs or sections marked with strikethrough (for deleted matter) or underlining (for added matter). • The requirement of a clean version is waived and a clean version should not be submitted. • An amendment to the specification, once made, should not be presented in subsequent amendment papers. • For substitute specification, no change from the current practice in § 1.125. The following are required: • a clean version, and • a marked-up version showing the changes for examiner use.

  22. Revised Drawing Amendment Format • Amendments to Drawings: • Submit only replacement figure(s) which include the changes, without markings, on a separate sheet(s) as an attachment to the amendment paper. • Proposed drawing correction process is eliminated. • Applicants should not submit any proposed drawing changes marked in red. • The changes must be explained in the remarks or drawing amendment section of the amendment paper. • Any replacement drawing sheet(s) including amended figure(s) should include all of the figures appearing on the immediate prior version of the sheet.

  23. Revised Drawing Amendment Format • Amendments to Drawings (cont.): • Header on replacement drawing sheet should include “Replacement Sheet”, application number, and date information. • The replacement drawing figure should not be labeled as “amended.” • Replacement drawing sheet with changes, accepted by examiner, unless notified by examiner. No further drawing submission is required. • If not acceptable, applicants will be notified of any objections or additional requirements.

  24. Revised Drawing Amendment Format • Amendments to Drawings (cont.): • Deletion of a figure requires the following: • Instructions to delete the figure; • Replacement sheet(s) 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.

  25. Benefit Claims to Prior Applications under 35 U.S.C. §§ 119(e), 120, 121, and 365(c) Prepared by: Office of Patent Legal Administration (OPLA) Robert J. Spar, Director (703) 308-5107 Bob.Spar@USPTO.gov

  26. Benefit Claimsunder 35 USC §§ 120, 121, and 365(c) • Must include a specific reference to the prior-filed nonprovisional application in • the first sentence of the specification; or • the application data sheet (ADS).

  27. Benefit Claimsunder 35 USC §§ 120, 121, and 365(c) • Specific reference to a nonprovisional application requires the following: • Identification of the prior-filed application by application number; and • Indication of the specific relationship (i.e., continuation, divisional, or continuation-in-part) of the applications; Exception: If application is a CPA, the request for CPA is the required specific reference, rule 1.53(d)(7) • Example 1: “This application is a continuation of Application No. 10/---, filed---.”

  28. Benefit Claims to Multiple Applicationsunder 35 USC §§ 120, 121, and 365(c) • If the benefit claims involve a chain of nonprovisional applications, • the relationship must be stated for each application (in the chain) relative to an immediate prior application, as a continuation, divisional, or continuation-in-part, to establish copendency throughout the entire chain.

  29. Benefit Claims to Multiple Applicationsunder 35 USC §§ 120, 121, and 365(c) • Example 2: “This application is a continuation of Application No. C, filed ---, which is a divisional of Application No. B, filed ---, which is a continuation-in-part of Application No. A, filed ---.” • Example 3: “This application is a continuation-in-part of Application No. C, filed ---, and also a continuation-in-part of Application No. D, filed ---.”

  30. Benefit Claims to International (PCT) Applicationsunder 35 USC §§ 120, 121, and 365(c) • Specific reference to an international application (IA) requires: • Identification of the prior-filed IA by • International application number and International filing date (not the § 371(c) compliance date); and • Specific relationship of the applications. • Example 4: “This application is a continuation of International Application No. PCT/US--/---, filed ---.” • This example is for a benefit claim to an IA in a “bypass” application. • A “bypass” application is a § 111(a) application claiming under § 365(c) the benefit of an IA that did not enter the national stage under § 371.

  31. Benefit Claims to International (PCT) Applicationsunder 35 USC §§ 120, 121, and 365(c) • Example 5: Specific reference to a National Stage (§ 371) Application • “This application is a continuation of Application No. 10/---, which is the National Stage of International Application No. PCT/US--/---, filed ---.” Note: §371(c) compliance date should NOT be given. • Example 6: Specific reference to an IA which claims the benefit of a prior U.S. Nonprovisional Application: • “This application is a continuation of International Application No. PCT/US--/---, filed ---, which is a continuation of U.S. Application No. 10/---, filed ---.”

  32. Benefit Claims to Provisional Applicationsunder 35 USC § 119(e) • Must include a specific reference to the prior-filed provisional application in the first sentence of the specification or an ADS. • Specific reference requires: • Only the identification of the prior provisional application by the application number. • No relationship between the subject nonprovisional application and the provisional application should be specified. • Example 7: “This application claims the benefit of U.S. Provisional Application No. 60/---, filed ---.”

  33. Benefit Claims to Provisional via IntermediateNonprovisional Applicationunder 35 USC §§ 120, 365(c) & 119(e) • If the subject application is not filed within 12 months from the filing date of the provisional application, the specific reference must identify: • An intermediate nonprovisional application that is directly claiming the benefit of the provisional application; and • The relationship between the nonprovisional applications. • Example 8: “This application is a continuation of Application No. 10/---, filed ---, which claims the benefit of U.S. Provisional Application No. 60/---, filed ---.”

  34. Benefit Claims to Provisional via Intermediate IAunder 35 USC §§ 120, 365(c) & 119(e) • Example 9: Specific reference to claim the benefit of a provisional application via an IA. • “This application is a continuation of International Application No. PCT/US--/---, filed ---, which claims the benefit of Provisional Application No. 60/---, filed ---.” • Example 10: Specific reference to claim the benefit of a provisional application via a National Stage (§ 371) Application • “This application is a continuation of Application No. 10/---, which is the National Stage of International Application No. PCT/US--/---, filed ---, which claims the benefit of Provisional Application No. 60/---, filed ---.”

  35. Impact of Failure to MakeProper Benefit Claims • Failure to timely submit the specific reference is considered a waiver of any benefit claim unless a petition under 37 CFR 1.78(a) and surcharge are filed. • The Office may not be able to publish applications promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought. • The publication may not include accurate benefit claims to determine the prior art date under 35 USC § 102(e).

  36. Notification of the Failure to MakeProper Benefit Claims • The Office plans to notify applicants on, or with, the filing receipt that a benefit claim may not have been recognized because it did not include the proper specific reference. • The filing receipt is usually provided shortly after the filing of the application so applicants should have sufficient opportunity to submit the proper benefit claim within the time period set in rule 1.78(a). • Applicants should carefully and promptly reviewfiling receipts in order to avoid the need to submit a petition under rule1.78(a) and surcharge under rule 1.17(t).

  37. Timely Correction of Benefit Claims • Within the time period of 37 CFR1.78(a)*, applicant may correct benefit claims by filing: • A request for corrected filing receipt, and • The Required specific reference • Via an amendment to the specification, or an application data sheet (ADS) (see slide 2); or • If previously submitted, a copy of the amendment or ADS. *The later of four months from the actual filing date or the date on which the national stage commenced, or sixteen months from the filing date of the prior-filed application.

  38. Untimely Correction of Benefit Claims • After the time period of rule 1.78(a) has expired, applicant may petition to correct benefit claims by filing: • A petition to accept an unintentionally delayed claim under rule1.78(a) and the surcharge under rule 1.17(t), and • The required specific reference (including the relationship of the nonprovisional applications and identification of any intermediate application which directly claims the benefit of the provisional application). • Note: any benefit claim under 35 USC § 119(e) must be submitted during the pendency of the instant nonprovisional application.

  39. Prior Applications Also Must Include Specific Reference • Each intermediate prior application must have specific reference to other prior applications. • For example, this benefit claim, “This application is a continuation of Application No. C, filed ---, which is a continuation of Application No. B, filed---, which claims the benefit of Provisional Application No. A, filed ---.” will only be effective if: • Application No. C actually includes a proper benefit claim to Application No. B and Provisional Application No. A; and • Application No. B actually includes a proper benefit claim to Provisional Application No. A.

  40. Adding an Incorporation-By-Reference • After the filing of an application, adding an incorporation-by-reference statement in a benefit claim is not permitted. • No new matter can be added to an application after its filing date. • See 35 USC § 132(a) and Dart Industries v. Banner, 636 F.2d 684, 207 USPQ (CADC 1980). • The Office will not accept a specific reference that includes an incorporation-by-reference statement of a prior application, unless such statement was submitted on filing of the application.

  41. Appendix: Examples of Benefit Claims under 35 USC §§ 120, 121, and 365(c) • Ex. 1: Specific reference to a nonprovisional application. • “This application is a continuation of Application No. 10/---, filed---.” • Ex. 2: Specific reference to multiple nonprovisonal applications. • “This application is a continuation of Application No. C, filed ---, which is a divisional of Application No. B, filed ---, which is a continuation-in-part of Application No. A, filed ---.” • Ex. 3: Specific reference to multiple nonprovisional applications. • “This application is a continuation-in-part of Application No. C, filed ---, and also a continuation-in-part of Application No. D, filed ---.”

  42. Appendix: Examples of Benefit Claims under 35 USC §§ 120, 121, and 365(c) • Ex. 4: Specific reference to an IA. • “This application is a continuation of International Application No. PCT/US--/---, filed ---.” • Ex. 5: Specific reference to a NS (§ 371) application • “This application is a continuation of Application No. 10/---, which is the National Stage of International Application No. PCT/US--/---, filed ---.” Note: §371(c) compliance date should NOT be given. • Ex. 6: Specific reference to an IA which claims the benefit of a prior U.S. Nonprovisional Application: • “This application is a continuation of International Application No. PCT/US--/---, filed ---, which is a continuation of U.S. Application No. 10/---, filed ---.”

  43. Appendix: Examples of Benefit Claims under 35 USC §§ 120, 121, and 365(c) • Ex. 7: Specific reference to claim the benefit of a provisional application when the subject application is filed within 12 months from the filing date of the provisional application. • “This application claims the benefit of U.S. Provisional Application No. 60/---, filed ---.” • Ex. 8: Specific reference to claim the benefit of a provisional application via a nonprovisional application. • “This application is a continuation of Application No. 10/---, filed ---, which claims the benefit of U.S. Provisional Application No. 60/---, filed ---.”

  44. Appendix: Examples of Benefit Claims under 35 USC §§ 120, 121, and 365(c) • Ex. 9: Specific reference to claim the benefit of a provisional application via an IA. • “This application is a continuation of International Application No. PCT/US--/---, filed ---, which claims the benefit of Provisional Application No. 60/---, filed ---.” • Ex. 10: Specific reference to claim the benefit of a provisional application via a National Stage (§ 371) Application • “This application is a continuation of Application No. 10/---, which is the National Stage of International Application No. PCT/US--/---, filed ---, which claims the benefit of Provisional Application No. 60/---, filed ---.”

  45. For Further Information… Office of Patent Legal Administration – (703) 308-6906 or e-mail to Patent Practice@USPTO.gov • Amendment Practice – Elizabeth Dougherty 306-3156 or Joe Narcavage 305-1795 • Patent Term Adjustment (PTA)- Kery Fries 308-0687 • Eighteen-Month Publication – Mark Polutta 308-8122 • Provisional Applications- Fred Silverberg 305-8986 • Reexamination- Jerry Dost 305-8610 or Ken Schor 308-6710 • Reissue- Joe Narcavage 305-1795 • RCEs & CPAs- Gena Jones 306-5586 or Joni Chang 308-3858 • Sections 102(e), 102(g) and/or 103(c) - Robert Clarke 305-9177, Mark Polutta 308-8122 or Jeanne Clark 306-5603 • Electronic Filing, CDs – Michael Lewis 305-5585 or Jay Lucas 308-6868

  46. For Further Information… • The American Inventors Protection Act of 1999 in general- http://www.uspto.gov/web/offices/dcom/olia/aipa/index.htm • The Patent Business Goals rule change in general- http://www.uspto.gov/web/offices/dcom/olia/pbg/index.html • Questions of a General Nature - Inventors Assistance Center- 800-PTO(786)-9199 • Electronic Business Center – Customer Numbers, PAIR, EFS - http://www.uspto.gov/ebc/index.html or (703)305-3028 • Recent Patent-Related Notices (published in O.G., F.R., etc.)- http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

  47. Check the USPTO web site for important announcements Patents Information

  48. Check the USPTO web site for important announcements http://www.uspto.gov/main/profiles/patty.htm Special Pages for Patent Attorneys and Agents

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