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(This page was created 16Nov2005 as a result of examiner training.)
Source materials: Strategic Plan Rule Making, 69 Fed. Reg. 56481 (September 21, 2004); 1287 Off. Gaz. Pat Office 67 (October 12, 2004)
The Office of Patent Legal Administration has tried to address every question submitted by examiners during their training sessions, sometimes using representative questions when multiple variations on the same issue were submitted. For further questions related to the materials below, or other matters covered by the Strategic Plan Rule Making rule package (above), the legal advisor identified in the rule package as a contact may be e-mailed.
A. Preamble: Effective Dates
B. S-Signatures (37 CFR 1.4)
C. Incorporation by Reference (37 CFR 1.57)
D. Table Duplication (37 CFR 1.58)
E. Applicant Data Sheet (37 CFR 1.76)
F. Drawings (37 CFR 1.84)
G. Models, Exhibits, and Specimens (37 CFR 1.91 and 1.94)
H. Information Disclosure Statement (IDS), Format Requirements (37 CFR 1.98)
I. Requirements for Information (37 CFR 1.105)
J. Supplemental Replies (37 CFR 1.111)
K. Preliminary Amendments (37 CFR 1.115)
L. Reissue (37 CFR 1.175 and 1.178)
(Note: Questions and Answers regarding the rules for Power of Attorney practice based on the Strategic Plan rulemaking have been placed with Power of Attorney Qs&As from other rulemaking and are located at: http://www.uspto.gov/web/offices/pac/dapp/poafaqs.htm.)
A. Preamble: Effective Dates
A1. How does the effective date work in regard to the Strategic Plan rule package?
The Final Rule had three effective dates (see slide 5 of the training slides, or page 56482 of the Final Rule for a rule by rule breakdown), which dates generally depend upon whether the change was favorable to applicants (immediately effective as of September 21, 2004), favorable to the Office except for fee increases (one month delay until October 21, 2004), or were directed to fee increases (two month delay until November 22, 2004 as November 21, 2004 was a Sunday). While all the effective dates are past, older papers may need to be evaluated as to whether compliance with the amended or prior rules is required.
Generally, the effective dates apply to the date a particular paper is being submitted and not the filing date of the application in which the paper is filed, with some exceptions, e.g., (1) incorporation by reference pursuant to 37 CFR 1.57(a), whereby inadvertently omitted material can be added only to applications filed on or after September 21, 2004, (2) information disclosure statements pursuant to 37 CFR 1.98, whereby copies of U.S. patents and U.S. patent application publications need not be supplied for applications of any filing date, (3) tables and sequences pursuant to 37 CFR 1.58 and 1.83, whereby duplication thereof is avoided in the specification and the drawings, (4) preliminary amendments pursuant to 37 CFR 1.115, where preliminary amendments filed with the application are part of the original disclosure for applications filed on or after the effective date, and (5) the original ribboned copy of a patent pursuant to 37 CFR 1.178, whereby its submission has been eliminated for all reissue applications.
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B.
S-Signatures (37 CFR 1.4)
S-Signatures:
B1.
Can an S-signature be utilized by the party signing a 37 CFR 1.8 certificate of mailing, such as on an amendment to a nonprovisional application, as that party may not be a registered practitioner?
Yes. 37 CFR 1.4(d)(2) provides that “[c]orrespondence being filed in the Office in paper ... for a patent application ... may be S-signature signed ....” This might occur on correspondence faxed directly from a PC with a Certificate of FAX transmission. Section 1.4(d)(2) explains S-signature requirements generally as to any person signing, whereas, § 1.4(d)(2)(ii) explains additional S-signature requirements as to use of an S-signature by a “registered practitioner.”
B2.
A handwritten signature is scanned into a computer, subsequently a reply to an Office action is drafted, a button is hit on the computer to insert the scanned handwritten signature into the reply. Is the signature a copy of a handwritten signature that is permitted under 37 CFR 1.4(d)(1), or is it an S-signature under 37 CFR 1.4(d)(2) that must comply with the requirements for slash marks, printed or typed name, and registration number?
The signature is an S-signature, not a handwritten signature. While the signature was created by hand, it was not inserted into the document by hand and is therefore not a handwritten signature. The “copy” language in 37 CFR 1.4(d)(1) refers to copies of a signed document, not a copy of a signature inserted into a document. While the scanned electronically inserted signature would appear to be a handwritten signature when the document is printed, it has been noted in the preamble discussion of the rule making that “signature replication or transfer means ... appears to be a handwritten signature, but is not actually handwritten, and would therefore be treated under 37 CFR 1.4(d)(2)” (69 Fed. Reg. at page 56484, middle col.). A scanned image of (a document that contains) a handwritten signature, such as an executed § 1.63 oath or declaration, filed via the Office's EFS is permitted as a copy under 37 CFR 1.4(d)(1)(ii). Id.
B3.
Can examiners S-sign their office actions?
No. The S-signature is for the signing of correspondence (e.g., by practitioners and applicants) that will (eventually) be filed in the Office (this includes S-signed papers submitted to a practitioner who will then file such paper in the Office). In contrast, the S-signature option is not available for Office correspondence.
B4. Can inventors use S-signatures?
Yes, inventors may use an S-signature pursuant to 37 CFR 1.4(d)(2) such as on the oath or declaration under 37 CFR 1.63. The requirements for an S-signature, however, are in addition to and do not substitute for the signature requirements specific to 37 CFR 1.63. Thus, an inventor seeking to S-sign a declaration pursuant to 37 CFR 1.63 must meet the signature requirements of both 37 CFR 1.63 and 37 CFR 1.4(d)(2). Pro se inventors can use S-signatures to sign replies to Office actions.
B5. As S-signatures permit only numbers that are Arabic, how would John T. Smith III utilize his actual name as the S-signature, which actual name is desired by the Office?
S-signatures permit both the use of letters and arabic numbers. John T. Smith III should use his actual name as part of the S-signature by supplying the roman numeral III by way of letters, the capital letter “I” used three times. He should also supply his actual name as part of the printed or typed version of the name to make it clear what his actual name is. Additionally, other numbers may be represented by text, e.g., the “third.”
B6. The MPEP states that examiners are responsible for notifying applicants of the status of an application where there is an improper signature and the need for correction by the appropriate party. MPEP 714.01(a). Does this mean that examiners are now responsible for sending out letters of improper signature for failing to meet the requirements of the newly created signatures under § 1.4 (e.g., for improper § 1.4(d)(2) S-signatures on amendments)?
Yes, the examiner must notify applicant of an improper signature as has always been the case. MPEP 714.01(a). The presence of an appropriate signature is to be checked at least initially by the LIE. Where the LIE discovers an improper signature or lack of any signature, or where the lack of a signature or an improper signature is later discovered by the examiner, it must be corrected by the examiner notifying applicant of the need for correction.
B7. Can an improper S-signature (i.e., no forward slashes, or only one slash) be fixed by an Examiner's Amendment?
No, an improper signature cannot be ratified by use of an Examiner's Amendment or by the use of any other type of Office action. This is because ratification must be accomplished by the submission of a paper by the appropriate party ratifying (confirming/approving) the previous improper signature. MPEP 714.01(a). See also Questions and Answers regarding the rules for Power of Attorney practice located at: http://www.uspto.gov/web/offices/pac/dapp/poafaqs.htm.
Insertion of a signature:
B8. 37 CFR 1.4(d)(2)(i) provides that “the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature.” Can a form be created that contains the slash marks (without any signature), or must the person signing the form also insert the slash marks?
Forms may be created that contain the “/ /” (slash marks) in preparation for a signature to be added by the party actually signing the form. 37 CFR 1.4(d)(2) states in-part that an “S-signature is a signature inserted between forward slash marks ....” 37 CFR 1.4(d)(2)(i) provides in-part that the “S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation ....” The slash marks are not defined as part of the S-signature. The preamble of the final rule states that the “S-signature must be placed between two forward slashes” (69 Fed. Reg. at page 56484, right-hand column, second full paragraph). The slash marks are not the signature but an “indicia manifesting an intent to sign ....” ( id .) Where, however, a party has inserted a signature on a form not containing the slash marks, a slash mark must be placed before and after the signature by the party who signed the form. To summarize, a party placing a typed name on a form without the slash marks does not indicate an intent to sign the form, and the addition of slash marks by another around the typed name would not be proper as it would be changing the intent of the appearance of the typed name on the form.
Assignments to be recorded:
B9. Do the signature requirements of 37 CFR 1.4(d) apply to assignments to be recorded pursuant to 37 CFR 3.11 and/or the accompanying cover sheets, pursuant to 37 CFR 3.31?
The signature requirements of 37 CFR 1.4(d) apply only to the cover sheets, not to the accompanying assignments.
37 CFR 1.4(a)(1) recites in-part “Correspondence relating to services and facilities of the Office, such as ... transmission of assignments for recording....”
Hence, 37 CFR 1.4, including the signature requirements of 37 CFR 1.4(d), would apply to a transmission of an assignment for recording, which is directed to the cover sheet, but 37 CFR 1.4 does not require that the accompanying assignment itself be governed by the provisions of 37 CFR 1.4 and in particular the signature provisions of 37 CFR 1.4(d).
37 CFR 3.31(a)(7) requires that a signature be present on the cover sheet. For assignments filed electronically, specific signature requirements for the cover sheet are set forth in 37 CFR 3.31(a)(7)(i) and (ii). For assignments not filed electronically, the signature requirements for the cover sheet are set forth in 37 CFR 1.4(d)(1) and in-part (d)(2).
Signature requirements are not set forth by the patent rules for the actual assignments as that is a matter of state law and the recording of the assignment by the Office is merely an administrative act that does not include evaluation of the effectiveness of the document to be recorded as a condition of recording. The Office may, however, in certain situations, such as under 37 CFR 3.71 where an assignee attempts to take action, review the assignment to verify that at least facially the assignment is executed by the party purporting to make the assignment.
The Office will not review the actual assignment as a condition of recording the assignment to determine if it is signed or meets any other conditions required for it to be an effective instrument. The Office will, however, review an accompanying cover sheet to determine its compliance with the electronic signature requirements of 37 CFR 3.31(a)(7)(i), and other forms of electronic signatures provided for by 37 CFR 3.31(a)(7)(ii), which were implemented by 37 CFR 1.4(d)(2) for certain forms of S-signatures, such as EFS Tag(ged) Image File Format (TIFF) and by 37 CFR 1.4(d)(3) for EFS character coded signatures.
Assignments to support action by an assignee:
B10. Do the signature requirements of 37 CFR 1.4(d) apply to assignments that are attached to 37 CFR 3.73(b) papers supporting the right of the assignee to take action pursuant to 37 CFR 3.71 in an application or patent?
No.
An assignee, for example may take over the prosecution of an application, pursuant to 37 CFR 3.71(a) provided that it establishes ownership of the application to the satisfaction of the Director. See 37 CFR 3.73(b)(1). Such ownership may be established by submitting a copy of an executed assignment, 37 CFR 3.73(b)(1)(i), or a statement specifying the reel and frame number of where the assignment is recorded in the Office, 37 CFR 3.73(b)(1)(ii).
As noted in B9, an assignment need not comply with the signature requirements of § 1.4(d), as compliance is required only for the cover sheet submitting the assignment. Similarly, the actual request by an assignee to conduct prosecution must comply with the signature requirements of 37 CFR 1.4(d), but a supporting unrecorded copy of an assignment, pursuant to 37 CFR 3.73(b)(1)(i), need not comply with the signature requirements of § 1.4(d). Note that the assignee could, in the alternative, have recorded a signature non-compliant assignment (so long as the cover sheet was signature compliant) and made reference thereto pursuant to 37 CFR 3.73(b)(1)(ii).
In other words, an assignment document itself is not governed by the signature requirements of § 1.4(d)(2) because that would concern the validity of the assignment document, which the Office generally does not evaluate. Nevertheless, if the Director is not satisfied that ownership has been established (due to a suspect signature on the underlying assignment), then the purported assignee will not be permitted to control the prosecution. Thus, for example,. an electronic signature may be utilized on the assignment that does not comply with the requirements of 37 CFR 1.4(d)(2). Should, however, a handwritten signature on an attached assignment not appear to be in permanent dark ink or its equivalent, the lack of compliance with 37 CFR 1.4(d)(1) may cause the Office to question the authenticity of the document for purposes of establishing the right of a particular assignee to take the action requested.
Applicants are reminded that 37 CFR 1.4(d)(4) provides for specific certifications made upon the presentation of any paper or document to the Office.
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C. Incorporation by Reference (37 CFR 1.57)
Section 1.57(a) Incorporation of inadvertently omitted material:
C1. A continuing application is filed that inadvertently leaves out material that only appears in an original claim of the prior application. Can 37 CFR 1.57(a) be utilized to amend the continuing application to include the omitted material?
Yes, the disclosure of the continuing application may be amended and a claim containing the inadvertently omitted material added, assuming compliance with the requirements of 37 CFR 1.57(a), such as the benefit claim being present on filing of the continuing application. Applicant must, however, file a corrective amendment in order for the omitted material to be included in the application. Any amendment, of course, must be commensurate in scope with the original claim.
C2. An application is filed with only one line of specification, which is a priority claim to a foreign application, and one broad claim. Can applicant subsequently add material from the foreign application and draft claims based on such added material?
Yes, if the requirements of 37 CFR 1.57(a) are met. Although 37 CFR 1.57(a) provides for the later addition of material from a prior foreign application, the initial absence of the material from the U.S. application must result from inadvertence. The presentation of an amendment to add the subject matter from the foreign application is a certification pursuant to 37 CFR 10.18(b) that the initial omission of such material was due to inadvertence. The Office may inquire as to inadvertence where the record raises an issue in regard thereto. See 69 Fed. Reg. 56481, 56503 at Comment 44 and the Response thereto in the published final rule.
C3(a). An original application and a first continuation are filed prior to the effective date of 37 CFR 1.57(a). A second continuation is filed subsequent to the effective date of § 1.57(a) and after the original application is no longer pending. If the first and second continuations have the same defect as to inadvertently omitted material, can such material that is present in the original application be placed by amendment in the two continuations?
The inadvertently omitted material cannot be added to the first continuation as it is filed prior to the effective date of 37 CFR 1.57(a). The inadvertently omitted material can be added to the second continuation as it is filed subsequent to the effective date of § 1.57(a). Although the inadvertently omitted material can be added to the second continuation, it would not receive benefit of any date earlier than the filing date of the second continuation because the material added to the second continuation as inadvertently omitted would not be present in the first continuation and the second continuation would therefore actually be a continuation-in-part and not a continuation.
C3(b). An original application is filed prior to the effective date of 37 CFR 1.57(a). First and second continuations are filed subsequent to the effective date of 37 CFR 1.57(a). Both the first and second continuations have the same defect as to inadvertently omitted material, which material is present in the original application. Can the inadvertently omitted material be added to both continuations?
As both continuations are filed subsequent to the effective date of 37 CFR 1.57(a), it may be possible to add the inadvertently omitted material to both depending upon the status of each the continuation applications. Simply amending the second continuation to add the inadvertently omitted material is not sufficient for such material to obtain benefit of the filing date of the original application without amending the first continuation to also add the inadvertently omitted material (unless the second continuation is copending with the original application). The amendment of both continuations may not always be possible. For example, if the first continuation is abandoned, revival of the application pursuant to 37 CFR 1.137 may be appropriate for the purpose of adding the inadvertently omitted material. If, however, the first continuation has issued as a patent, a certificate of correction or a reissue application could not be used to add the inadvertently omitted material to the patent.
C3(c). The same facts as in C3(b) but the first continuation is abandoned. Applicant cannot meet the standards for revival of the abandoned first continuation either under the unintentional or unavoidable provisions of 37 CFR 1.137. Is there any other remedy to insert the inadvertently omitted material into the abandoned first continuation application?
Possibly. 37 CFR 1.183 provides that a nonstatutory requirement of the rules, such as pursuant to 37 CFR 1.57(a) that an application be amended to include the inadvertently omitted material before abandonment of the application, may be waived in extraordinary situations where justice requires. The inability of an applicant to revive an application for the sole purpose of amending the application by the addition of inadvertently omitted material such that loss of patent rights may result could possibly on a case by case basis be remedied pursuant to 37 CFR 1.183. Applicant would at a minimum be required to show that applicant could not meet the unintentional or unavoidable standards and that loss of patent rights would occur.
A petition under 37 CFR 1.182 would not be appropriate as it is a requirement of 37 CFR 1.57(a) that the application be amended prior to abandonment of the application.
C4. Applicant filed an application with a claim for the benefit of a prior-filed U.S. application on filing but the reference to the prior-filed U.S. application is included in the transmittal letter or a § 1.63 oath/declaration, rather than either in the first sentence(s) of the specification (including an amendment to the first sentence(s) of the specification), or an application data sheet pursuant to § 1.76. If all the other requirements of 35 U.S.C. 120 and 37 CFR 1.78 are met, would the benefit claim be considered an incorporation by reference as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that applicant would be able to amend the application to include the inadvertently omitted material (notwithstanding the failure to place the benefit claim in the first sentence(s) of the specification or an ADS)?
No. 37 CFR 1.57(a) requires that a claim under 37 CFR 1.78 to a prior-filed nonprovisional, provisional, or international application must have been present on the filing date of the application in order for the benefit claim to be considered an incorporation by reference of the prior-filed application as to inadvertently omitted material. 37 CFR 1.78 additionally requires that the reference to the prior-filed application must be in the first sentence(s) of the specification, or in an application data sheet. Accordingly, a benefit claim under 37 CFR 1.78 was not present on the date the application was filed as required by § 1.57(a).
C5. Applicant filed a continuation application with a claim for the benefit of a prior-filed U.S. application on filing, but identified an incorrect application number, application No. 05/123,455, instead of the correct application number, application No. 06/123,455. The incorrect reference in the benefit claim in the continuation is later corrected. Would the benefit claim be considered an incorporation by reference of application No. 06/123,455 (the correct application) as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that applicant would be able to amend the continuation to include the inadvertently omitted material (notwithstanding the use of an incorrect prior application number)?
No. Applicant must identify the correct prior-filed application number on filing the continuation for the applicant to be permitted to add inadvertently omitted material contained in the prior-filed application to the continuation pursuant to 37 CFR 1.57(a).
C6. Applicant filed a continuing application with a claim for the benefit of a prior-filed U.S. application present on filing of the continuing application. The benefit claim merely stated that the application was a “continuing” application of the prior-filed application, rather than providing the specific relationship of the applications, i.e., continuation, divisional, or continuation-in-part as required by 37 CFR 1.78(a)(2)(i). If all the other requirements of 35 U.S.C. 120 and 37 CFR 1.78 are met, would the benefit claim be considered an incorporation by reference as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that applicant would be able to amend the continuing application to include the inadvertently omitted material (notwithstanding the failure to set forth a specific relationship)?
No. Applicant must specify whether the continuing application is a continuation, divisional, or continuation-in-part application in order for the benefit claim to be considered to contain the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78 (See MPEP 201.11) and the specific relationship must be supplied on filing of the continuing application to comply with 37 CFR 1.57(a).
C7. Applicant filed a continuing application with a claim for the benefit of a prior-filed U.S. application on filing of the continuing application that correctly identified the application number of the prior-filed application and correctly provided the specific relationship of the prior-filed and continuing application (e.g., that the application was a continuation of the prior-filed application), but the incorrect filing date of the prior-filed U.S. application was identified in the benefit claim. If all the other requirements of 35 U.S.C. 120 and 37 CFR 1.78 are met, would the benefit claim be considered an incorporation by reference as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that applicant would be able to amend the continuing application to include the inadvertently omitted material (notwithstanding the error in the filing date of the 35 U.S.C. 111(a) application)?
Yes. 37 CFR 1.78 does not require the reference to a prior-filed U.S. application filed under 35 U.S.C. 111(a) to identify the filing date of the prior-filed application. Thus, the benefit claim was properly made on filing of the continuing application and inadvertently omitted material may be added to the continuing application pursuant to 37 CFR 1.57(a).
C8. Applicant filed a U.S. application under 35 U.S.C. 111(a) with a benefit claim present on filing to a prior-filed international application designating the United States of America that identified the international application and provided the specific relationship of the applications (e.g., that the application was a continuation of the prior-filed application), but an incorrect international filing date was identified in the benefit claim. The international application did not enter the national stage. If all the other requirements of 35 U.S.C. 120 and 37 CFR 1.78 are met, would the benefit claim be considered an incorporation by reference as to inadvertently omitted material pursuant to 37 CFR 1.57(a) such that an applicant would be able to amend the 35 U.S.C. 111(a) (bypass) application to include inadvertently omitted material (notwithstanding an error in the international filing date)?
No. 37 CFR 1.78 requires that the reference to a prior-filed international application designating the United States must identify both the international application number and the international filing date.
C9(a). A nonprovisional application was filed prior to the effective date of 37 CFR 1.57(a) (i.e., prior to September 21, 2004) and inadvertently omitted a figure of the drawings. The nonprovisional application claimed priority to a foreign application that included the missing figure. The nonprovisional application did not contain an explicit incorporation by reference of the prior-filed foreign application. The missing figure contains matter that is not otherwise contained in the nonprovisional application. A continuation was filed after the effective date of 37 CFR 1.57(a) that also inadvertently omitted the same figure. Can applicant amend the continuation to contain the omitted figure?
Yes, the figure can be added, but the application must be redesignated as a continuation-in-part application.
C9(b). Same facts as in C9(a), except that the figure was purposely omitted when filing the continuation. Can applicant later add the omitted figure to the continuation pursuant to 37 CFR 1.57(a) in view of the inadvertent omission from the nonprovisional application?
No. The inadvertent omission must occur in the application for which applicant is trying to invoke 37 CFR 1.57(a). While the omission of the figure was inadvertent for the nonprovisional application, the omission was not inadvertent when the continuation application was filed.
C10. Is the phrase “related to” considered a priority claim?
No. A general statement of relationship is not an actual claim for benefit or priority.
Section 1.57(b) Incorporation of essential/nonessential material:
C11. If an examiner wants to ask for a copy of an incorporated reference, e.g., to see the incorporated material in context of the reference, should such request be done utilizing a requirement for information under 37 CFR 1.105?
No. Applicant may be required to submit a copy of the incorporated reference pursuant to 37 CFR 1.57(e), which is more specific than 37 CFR 1.105.
C12. How do you judge the existence of clear intent to incorporate by reference where the root words are not initially present so as to permit their later insertion?
In the same manner as prior to the rule change. It is a judgement call made on a case by case basis. Some language, such as a mere reference, would not be sufficient (as in a priority of C11, while other language going further than a mere reference may be sufficient.
C13. A clear intent to incorporate by reference must be initially presented under 37 CFR 1.57(b)(1). Is this requirement contradictory of the incorporation by reference provided in 37 CFR 1.57(a)?
The presence of a priority or benefit claim on the filing of an application will by itself act to incorporate inadvertently omitted material completely contained in the prior application. Pursuant to 37 CFR 1.57(a), the presence of such priority or benefit claim is a clear expression of an intent to incorporate by reference inadvertently omitted material. For incorporation by reference of essential and nonessential material contained in another document pursuant to 37 CFR1.57(b)-(g) (which is not inadvertently omitted material, but material attempted to be a part of the application and its presence is not triggered by a priority or benefit claim), there also must be an initial intent to clearly incorporate such material, such as by using the root words “incorporate” and “reference.” The initial presence of such root words will establish a clear intent to incorporate. In the absence of such root words, there must be present in some other manner a clear initial intent to incorporate the essential or nonessential material to later permit either amendment to add the root words or the physical addition of the material initially attempted to be incorporated.
C14. An application is filed improperly incorporating essential material from a pending nonpublished U.S. application. If the pending nonpublished application issues as a patent during prosecution of the application containing the incorporation by reference, is that sufficient to correct the problem - assuming that the patent number is added by amendment?
Yes.
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D. Table Duplication (37 CFR 1.58)
D1. 37 CFR 1.58 clarifies that a table may not be included in both the drawings and the body of the specification. Does the apply to applications with tables, or amendments containing tables submitted prior to the effective date of the rule change, October 21, 2004?
No. The rule change applies only to applications with tables, or amendments containing tables, or amendments containing tables, submitted on or after the effective date of the rule change. The rule change does not apply to applications with tables, or amendments containing tables, submitted prior to the effective date of the rule change, October 21, 2004.
D2. An application filed after October 21, 2004 contains duplicate tables in the specification and drawings after the effective date for the prohibition of such duplication. What is the examiner's obligation?
While an examiner will obviously review both the specification and drawing(s) during examination, the examiner need not specifically check an application containing tables (or sequence listings, 37 CFR 1.83) to see if there is duplication in the tables between the specification and drawings, particularly where there are extensive disclosures. Where, however, an examiner becomes aware of and notes the existence of such duplication in an Office action, the examiner must insist on compliance with the rule against duplication as the examiner cannot waive the rule.
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E. Applicant Data Sheet (37 CFR 1.76)
E1. The amendment to 37 CFR 1.76(a) requires that an application data sheet contain a specific title “Application Data Sheet” and that all seven headings listed in 37 CFR 1.76(b) be presented with any appropriate data for each heading. An application data sheet is filed containing a proper foreign priority claim pursuant to 37 CFR 1.76(b)(6). The application data sheet, however, either fails to contain the required specific title for the ADS (37 CFR 1.76(a)), or the domestic priority information heading of 37 CFR 1.76(b)(5) is not provided because domestic priority is not being claimed. Does either failure in a formality requirement in the application data sheet that is unrelated to the foreign priority claim affect the effectiveness of the properly presented foreign priority claim?
No, but the application data sheet would be improper due to either of the unrelated informalities. The application data sheet informality would need to be corrected by submission of a corrected application data sheet with either: the correct title, or the domestic priority heading. Alternative to submission of a corrected application data sheet, applicant need not continue to rely on the application data sheet by correcting either informality, but provide for identification of the foreign application in an oath or declaration as required by 37 CFR 1.63(c)(2).
Additionally, if the application data sheet had been filed along with the application papers, 37 CFR 1.57(a) would be available to incorporate from the foreign priority application any material inadvertently omitted from the U.S. application.
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F. Drawings (37 CFR 1.84)
F1. Can drawings be e-mailed to the Office?
No. Drawings can be facsimile transmitted (other than for purposes of an application filing date), but not e-mailed to the Office.
F2. What if a faxed drawing is clear but it appears pixilated? Will that copy be used to publish the patent?
Yes.
F3. If an original drawing is intended to represent prior art, but is not labeled as such, can the drawing be fixed by Examiner's Amendment, rather than objecting to it?
No. An Examiner's Amendment cannot be used to add text to a drawing. Applicant would need to submit a replacement drawing with the text identifying it as prior art.
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G. Models, Exhibits, and Specimens (37 CFR 1.91 and 1.94)
G1. A pro se inventor calls to arrange an interview and wants to bring a 3-dimensional model and a video. How should the examiner treat this request?
The inventor should be advised that a model or exhibit should not be shown to the examiner unless it is made of record. Since 3-D models and videos do not comply with requirement of 37 CFR 1.91(a)(1) of conformance with 37 CFR 1.84, they cannot be made of record pursuant to 37 CFR 1.91(c) unless the model or exhibit is accompanied by photographs that show multiple views of the material features of the model or exhibit that substantially conform to 37 CFR 1.52 or 37 CFR 1.84, or screen shots of the video that show its material features. Accordingly, the inventor should be advised to also bring photographs or screen shots of the model or video so that the model or video can be made of record. Absent the ability to make of record the model or video, the examiner may not view the model or video, even for background information. The examiner need not retain the 3-D model or exhibit in an artifact file and should request applicant to take them at the end of the interview or the examiner may dispose of them. The photographs or screen shots will be retained by the Office.
Thus, the best practice is, when an examiner receives an inquiry as to whether a practitioner/applicant can come in for an interview, that the examiner should inquire as to the purpose of the interview. If the interview is for the purpose of showing an exhibit or model, then the attorney must be told that the 3-D exhibit or model may only be shown if it is made of record by compliance with 37 CFR 1.91(c), which should occur prior to the date of the interview.
G2. Can items of an odorous nature, e.g., perfume or deodorant, be brought in for an interview, even if not susceptible to optical scanning or photographic representation?
Yes, but only after the party requesting the interview has filed a petition pursuant to 37 CFR 1.91(a)(3) that explains why entry of the perfume or deodorant sample in the file record is necessary to demonstrate patentability and the petition has been granted. (See G1 for a discussion re entry of all exhibits in the record that an examiner reviews). The petition is required for entry of this type of exhibit into the record as the exhibit would be incapable of meeting the requirements of 37 CFR 1.91(c) re 37 CFR 1.52 or 37 CFR 1.84. The exhibit should not be returned as the exhibit cannot otherwise be represented in the record. Where the exhibit is perishable, the exhibit may be disposed of pursuant to 37 CFR 1.94(a) with the examiner adding such descriptive comments to the record as appropriate.
This answer pertains equally to any exhibit that cannot be adequately presented by visual representations, i.e., exhibits that must be apprehended by one of the senses other than sight to appreciate the significance of the exhibit to the determination of patentability. Other examples would include audio recordings of sounds that are not susceptible to transcription, physical artifacts with textures that may be felt, but not visually perceived, items whose taste or other oral perception is a significant patentable characteristic, and items whose patentable characteristic is the absence of a sensory perceptibility, e.g., lack of smell.
G3. Once the examiner in charge of the application no longer needs a model for examination of the application for which it was submitted, adequate photos have been made of record, and applicant does not wish its return, can the examiner simply dispose of the model?
Yes, the examiner can dispose of the model.
G4. If a model is being returned after applicant submitted the required postage, where does the examiner take the model to be mailed back to applicant?
Each TC is responsible to mail back models.
G5. What is the document code for photos of models? Will the photos be scanned into IFW?
The document code for photos of models is “REM.” The photos of models must be scanned into IFW.
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H. Information Disclosure Statement (IDS), Format Requirements (37 CFR 1.98)
H1. A prior art citation list is submitted where applicant has chosen not to make use of the Office's PTO/SB/08A or 08B forms for citing prior art, but instead used an outdated form that does not provide the required separate sections for citation of U.S. patents and U.S. patent publications, or a column that provides a space next to each citation for the examiner's initials, or a heading that clearly indicates that the citation list is an IDS. What is the examiner's obligation to review the citations that are not submitted in a format compliant with the rule?
The examiner need not review any citation that does not comply with the content requirements of 37 CFR 1.98, but must inform applicant in the next Office action of any citation that was not reviewed, and should draw a line through each such citation, or through the entire IDS listing. Alternatively, the examiner may choose to review such citations and list such citations on a PTO-892 form. The examiner may not “fix” applicant's citation list by attempting to add the missing format requirements. If the examiner does not review the citations, the examiner must inform applicant of the defects in the IDS.
Note (1): Applicants must discontinue the practice of utilizing a copy of an IDS listing submitted in a prior application that was returned by the Office and was marked up by the examiner, when submitting the same IDS listing in a continuing application. Such IDS listing, even if a PTO/SB/08A or 08B form was used in the prior application, would not comply with the format requirements in a continuing application when a copy thereof is supplied as the previously submitted form has already been marked up by the examiner in the parent application, and therefore, does not provide clean spaces for it to be marked up in the continuing application.
Note (2): As 37 CFR 1.98(a)(1) does not require a separate section for foreign patents and nonpatent literature, the failure of applicant's form to list the U.S. patents and U.S. patent publications separately would not remove the need for the examiner to review the foreign patents and nonpatent literature, even though their listings were combined with the U.S. patents and U.S. patent publications. In such case, where only the separate listing requirement was not met, the examiner would consider the IDS in part. Of course, where the column or heading requirements were not met, the entire IDS can be refused consideration.
H2. Can an applicant submit a copy of an examiner's PTO-892 form from a prior application in a continuing application as an IDS submission?
No. Any form for citations submitted as an IDS must comply with the new 37 CFR 1.98 format requirements, including 37 CFR 1.98(a)(1)(ii) that requires a column that provides a space for the examiner's initials. A PTO-892 form for examiner use would not meet such format requirement.
H3. Where an IDS, filed at the same time as the application, does not contain the application number as required by 37 CFR 1.98(a)(1)(i), should the IDS be objected to and not treated?
No. The application at the time of its filing had no application number assigned to it, and therefore, none was required on the IDS.
H4. Does applicant have to submit a copy of a foreign reference if it was cited in a parent application?
No. There has been no change in this practice. Section 609, I.A.2. of the MPEP states that an examiner will consider information which has been considered by the Office in a parent application when examining a continuation application. If the foreign reference was properly cited in the parent application and considered therein, the examiner will consider the foreign reference in the continuation and applicant need not supply a copy thereof in the continuing application (where applicant wishes the citation to be printed on the face of the patent the citation must be listed on an IDS in the continuation). If the examiner cannot obtain a copy of the foreign reference, the examiner can request that applicant again supply a copy of it.
H5. Where are pending U.S. applications to be cited on an Office IDS form so that they will be considered and listed on the patent?
Pending published U.S. applications are to be cited as U.S. application publications on the form PTO/SB/08A section “U.S. PATENT DOCUMENTS.” Pending U.S. applications that are not published are to be cited as pending applications on the form PTO/SB/08A section “NON PATENT LITERATURE DOCUMENTS.”
H6. What if the application number of a pending application is the only information supplied in the IDS? Is that treated as a citation only of the specification, claims, and drawings?
Independent of the Strategic Plan rule making, the Office issued an OG Notice (1287 Off. Gaz. Pat. Office 163 (October 19, 2004)(signed September 21, 2004)) waiving the requirement for a copy of each pending U.S. patent application cited in an IDS, where the application is stored in IFW. Where applicant takes advantage of the waiver and cites to a pending U.S. application without supplying a copy thereof, a proper citation of a pending U.S. application requires only a review of the specification, claims and drawings of the application and not other papers in the pending U.S. application being cited. To obtain review of other papers, such as any IDS filed in the cited pending application, applicant must identify such other papers. Note: continuation applications require review of the prior application and consideration of any IDS considered therein. Where applicant also supplies with the IDS a copy of papers other than the specification, claims and drawings that are part of the pending U.S. application (e.g., IDS submitted therein), the supplied papers must also be reviewed where the citation is a proper citation.
Where only the application number has been supplied, the citation is not proper and the cited pending U.S. application need not be considered until additional information (inventor and the filing date) is supplied. MPEP 609, III., A(1).
H7. Can prior PTO-1449 forms still be used or should only new PTO form PTO/SB/08 be used?
The Office encourages only the use of PTO/SB/08 forms as they are kept in compliance with the requirements for IDSs. Applicants, however, are never required to utilize any form supplied by the Office. When applicants choose not to do so, they must, however, comply with the requirements under the rules, such as 37 CFR 1.98. The Office no longer supports 1449 forms and their use is not encouraged.
H8. Does an IDS filed after a reply count as a supplemental reply?
No. Time frames for submission of IDSs are governed by 37 CFR 1.97, not 37 CFR 1.111.
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I. Requirements for Information (37 CFR 1.105)
I1. What procedure (form paragraph/signature) is needed for approval of a requirement for information related to the current amendment (interrogatories, stipulations and types of factual information concerning, the related art, the disclosure, claimed subject matter, other factual information pertinent to patentability, or the accuracy of the examiner's stated interpretation of such items)?
Each TC will determine which management personnel must review such a requirement before mailing. Currently, the Office does not intend to develop form paragraphs as the types of information to be required are not routine and should be treated on a case by case basis.
I2. Can the changes in 37 CFR 1.105 be applied to applications pending before the October 21, 2004 effective date of the rule change?
Yes. The rule is only illustrative of the general ability of examiners to question applicants in appropriate circumstances and the amendment to the rule did not establish a new right.
I3. If a reply to a requirement for information states that the information requested is unknown or not readily available, can a newly applied rejection under 35 U.S.C. 112 paragraphs 1 and/or 2 based on such reply be made final?
No. It may, however, be appropriate in some situations to make a rejection under 35 U.S.C. 112 paragraphs 1 and/or 2 at the time the requirement for information is sent.
I4. For an added limitation in an amended specification/claim where the examiner cannot find support for the added limitation in the original specification, should the examiner make a new matter rejection/objection, or use a 37 CFR 1.105 Requirement for Information request?
The choice may vary depending upon the nature of the circumstances and the state of prosecution. Generally, prosecution would be best advanced by making the rejection rather than the requirement for information. The Requirement for Information may, however, be more useful, for example, if the amendment was a preliminary amendment, which would affect the search that would need to be made and applicant might locate support for the amendment in a large/complicated disclosure. Alternatively, if the application were in condition for allowance except for resolution of this issue, the examiner may simply wish to call applicant to try to resolve the issue rather than make a rejection.
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J. Supplemental Replies (37 CFR 1.111)
J1. How should supplemental replies be physically treated for IFW applications if the reply is entered or not entered?
When the examiner is ready to act on the application, the examiner will print out the first page of the supplemental reply, note “enter” or “do not enter,” initial, date the notation, and turn the page in with the office action.
J2. When is a reply considered supplemental?
A supplemental reply is a reply filed after a complete (37 CFR 1.111(b)) first reply is filed to an Office action, but before another Office action is mailed in response to the first reply.
J3. Is a second amendment in an RCE (submitted before the first Office action after filing of the RCE) considered a “Supplemental Reply” and therefore not entered as a matter of right?
Yes. Where applicant is aware of the need to submit a second amendment when the RCE is filed, a request for suspension under 37 CFR 1.103(c) should be submitted along with the RCE request, in which case the second amendment can be entered as a matter of right during the suspension period pursuant to 37 CFR 1.111(a)(2)(ii).
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K. Preliminary Amendments (37 CFR 1.115) K1. One application is filed with a preliminary amendment to the specification and a second application is filed with a preliminary amendment to the claims. Both applications are filed with executed 37 CFR 1.63 declarations that do not refer to the preliminary amendments. What is the examiner's responsibility in regard to 37 CFR 1.115 requiring an oath or declaration under 37 CFR 1.63 referring to any preliminary amendment that contains subject matter not otherwise present in the specification or drawings?
The examiner is not required to review the preliminary amendments to determine if the preliminary amendments contain subject matter not otherwise included in the specification or drawings. Such responsibility has been placed with applicant. If, however, the examiner should become aware that a preliminary amendment contains subject matter not otherwise present in the original specification including the claims or drawings, the examiner may advise applicant that a new oath or declaration under 37 CFR 1.63 that refers to the preliminary amendment should be submitted and identify the pertinent subject matter. It is then up to applicant to determine whether such oath or declaration should be filed and file one where warranted. The examiner should not insist on such submission nor continue to advise applicant for the need for such submission where one is not filed.
K2. Does the revision to 37 CFR 1.115 (which makes a preliminary amendment filed with the application a part of the original disclosure of the application) change the way the Office considers a preliminary amendment which contains subject matter not otherwise present in other parts of the disclosure? Please explain.
Yes. In the past, if the preliminary amendment filed with the application contained subject matter not otherwise present in other parts of the application's disclosure, that amendment should have been treated as containing new matter unless either: the first filed oath or declaration in compliance with 37 CFR 1.63 referred to the preliminary amendment, or a petition, petition fee, new declaration referring to the earlier filed preliminary amendment, and a required surcharge were filed. For applications filed on or after September 21, 2004, a preliminary amendment filed with the application containing subject matter not otherwise present in other parts of the application's disclosure should no longer be treated by the Office as containing new matter. It is applicant's obligation, however, to make a determination of whether the preliminary amendment filed with the application contains material not otherwise present in the disclosure of the application, and, if so, execute a 37 CFR 1.63 oath or declaration referring to such preliminary amendment.
K3. If a preliminary amendment is filed with a continuation (that utilizes a copy of the 37 CFR 1.63 declaration from the parent application) and contains subject matter not supported by the prior application, is such subject matter new matter in regard to the prior application?
Yes, but only in regard to the prior application. The continuation is really a continuation-in-part application and a new 37 CFR 1.63 declaration would be required for the continuation-in-part application. Where the preliminary amendment also contains subject matter not otherwise supported by the continuation-in-part application, applicant should also refer to the preliminary amendment in a 37 CFR 1.63 oath or declaration.
K4. Are claims cancelled by preliminary amendment at the time of filing an application considered originally presented for purposes of the disclosure?
Yes. The Office will treat the material in the cancelled claims as being originally presented and therefore retrievable and subject to being later added back and supported as of the filing date of the application.
K5. Where a preliminary amendment is filed subsequent to the filing date of the application, and it contains subject matter not otherwise supported by the specification, would the Office still treat the preliminary amendment as containing new matter and issue the appropriate rejection/objection?
Yes.
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L. Reissue (37 CFR 1.175 and 1.178) Section 1.175 - Errors in Continuation Reissue Applications:
L1. It has been clarified that where a prior reissue application is not being abandoned, a continuation thereof must identify an error in the reissue declaration that was not being corrected in the prior reissue application. For example, a patent contains two independent claims, one to a pencil lead composition containing volcanic ash in the lead and one to an ink composition containing volcanic ash in the ink. A first reissue is filed to remove the “volcanic ash” from the lead composition and the error is so noted in the reissue declaration. If a continuation reissue is filed to also remove “volcanic ash” from the ink composition and the (same) error is noted in the declaration of the continuation, how could a new error be identified in the continuation?
The error in the original reissue application should be identified as including volcanic ash in the lead composition, while the error in the continuation should be identified as including volcanic ash in the ink composition. Thus, the two errors, both involving the inclusion of volcanic ash in a composition would be different errors as the errors are directed to what is being claimed and what is being claimed in the original reissue application and the continuation reissue application are different.
Section 1.178 - Reissue - Physical Surrender of the Original Letters Patent:
L2. The requirement in reissue for the physical surrender of the original letters patent (ribbon copy) has been eliminated for all future and pending reissue applications. Where such requirement is the only outstanding requirement, will the Office reissue the patent without need for applicant to reply to such requirement that it is moot in view of the rule change?
Applicant must timely reply by either: physically surrendering the patent as was required, or by stating that the outstanding requirement is now moot. Failure to timely submit an appropriate reply will cause the application to become abandoned, even where the requirement for physical surrender of the original letters patent is the only outstanding requirement.
L3. Can patentee request return of the physical letters patent that was submitted in a reissue application filed prior to the effective date eliminating the requirement to submit the ribboned patent?
Yes. If the Office can locate the ribboned copy, it will be returned to patentee regardless of the filing date of the reissue or whether the reissue is currently pending.
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