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A copy of the Federal Register notice appears at the Office’s Internet Web site www.uspto.gov at the Federal Register notices web page, presently located at http://www.uspto.gov/web/menu/current.html#register Prepared
December 9, 2003 by: Electronic Signatures - 37 CFR § 1.4
For example:
E-Signature advantages: A. Permits applicants and third parties without access to scanners and facsimile machines to e-sign electronic documents (e.g., affidavits or declarations) and return them to a practitioner by e-mail. B. Saves time by allowing facsimile transmission to the Office directly from a computer without first printing on paper and then faxing the paper version. C. Permits practitioners to automate their records and
electronically maintain signed documents. A. Software and hardware are constantly evolving, so that it may be difficult to access old electronic records (e.g., magnetic cards, 8.5 inch floppy discs). Similarly, replicating how the document appeared to the signer may be difficult because of track changes/notes embedded in the document, screen size, screen resolution, print driver and differences in software versions. B. Chain of custody, non-alteration of document and (in case of repudiation) authentication of signature more difficult to document as many practitioners don't log the electronic movement of messages and their modification. Requirements: A. Correspondence containing an e-signature must be sent to the Office by approved means for that type of correspondence:
Note:
*This would be a new requirement for 37 CFR 1.33(b)(1). E, For non-practitioner signers
Ratification of an e-signature may be required where there is reasonable doubt as to the authenticity of the e-signature; for example: A. Where there are variations in the e-signature from one document to another; or B. Where a document contains the name of the signer in its text without some indication of the family name, such as by all capital letters. 13 Examples Registered practitioners signing pursuant to 37
CFR 1.33(b)(1) or 1.33(b)(2) Any other signature (e.g., on: declarations, affidavits,
assignment statements, or any paper by a pro se applicant)
Electronic Signatures, 37 CFR § 1.4 Example 1 Option 1: /John T. PRACTITIONER, Reg. #123456/ These are the required e-signature options for a registered practitioner who is signing pursuant to § 1.33(b)(1) or (b)(2). Either option is a proper e-signature because:
The word (number), the abbreviation (No.) or the number character (#) for the registration number is acceptable. See Ex. 2. If the practitioner’s registered name is “John Thomas Practitioner,” then the e-signature must be either:
Correspondence with an e-signature of a registered practitioner as set forth in options 1, 2, 3 or 4, depending on the person’s name, as registered, of Ex. 1 will be accepted. Conversely, correspondence with an e-signature of a registered
practitioner that does not follow the format of Ex. 1,
or one of the acceptable variations in Ex. 2, 3, 4, and
6 will be treated as unsigned. Electronic Signatures, 37 CFR § 1.4 Example 2 Situation: The practitioner’s registered name including a hyphenated family name and a title (e.g., Ph.D.) is presented. The e-signature on the correspondence is: Is this a proper e-signature? Answer: Yes This is a proper e-signature because:
Correspondence with an e-signature as set forth in Ex.
2 will be accepted. Situation: Ex. 3A and 3B address the situation of
a practitioner who has changed her name since she registered
with the Office.
The e-signature on the correspondence is:
Question: Is this a proper e-signature? Answer: Yes This is a proper e-signature because:
See Ex. 2 for additional reasons why this is a proper e-signature. Correspondence with an e-signature as set forth in Ex.
3A will be accepted. Situation: This is the same as in Ex. 3A except the
attorney signs her current actual name instead of her
registered name.
Question: Is this a proper e-signature? Answer: No This is an improper e-signature because:
Correspondence with an e-signature as set forth in Ex. 3B will be treated as unsigned; see Ex. 3A for a correct e-signature. Electronic Signatures, 37 CFR § 1.4 Example 4A Situation: Ex. 4A, 4B and 4C address the situation of a registered practitioner attempting to sign for another registered practitioner. The e-signature on the correspondence is:
Question: Is this a proper e-signature? Answer: No This is an improper e-signature because:
Correspondence with an e-signature as set forth in Ex. 4A will be treated as unsigned. See Ex. 6 for a practitioner signing for an inventor.
Electronic Signatures, 37 CFR § 1.4 Example 4B Ex. 4B is the same as Ex. 4A but the e-signer provided his registration number. The e-signature on the correspondence is:
Question 1: Can the e-signature be accepted under § 1.33(b)(1) or (b)(2) despite the indication that it is being signed “for” another? Question 2: If the answer to question 1 is yes, is this
a proper e-signature? Answer for Question 1: Yes The e-signature can be accepted if it separately qualifies on the basis of John T. Practitioner signing for himself as a registered practitioner with a proper e-signature.
John T. Practitioner’s signature for Julie B. Smith is acceptable.
Answer for QUESTION 2: Yes The e-signature is proper because:
Correspondence with an e-signature as set forth in Ex.
4B will be accepted. Electronic Signatures, 37 CFR § 1.4 Example 4C Ex. 4C is the same as Ex. 4B but the e-signer signs “by” instead of “for”. The e-signature on the correspondence is:
Question 2: If the answer to question 1 is yes, is this a proper e-signature? Answer for Question 1: Yes The e-signature can be accepted if it separately qualifies on the basis of John T. Practitioner signing for himself as a registered practitioner with a proper e-signature.
John T. Practitioner’s signature is acceptable as a signature for Julie B. Smith.
Answer for QUESTION 2: Yes The e-signature is proper because:
Correspondence with an e-signature as set forth in Ex. 4C will be accepted Electronic Signatures, 37 CFR § 1.4 Example 5 Situation: A customer number (CN) is used as the e-signature
and the practitioners associated with the CN are of record
in the application.
QUESTION: Is this a proper e-signature? Answer: No This is an improper e-signature because:
Correspondence with an e-signature as set forth in Ex.
5 will be treated as unsigned. Situation: The correspondence is expressly signed by an attorney of record on behalf of an inventor.
The e-signature on the correspondence is:
QUESTION: Is this a proper e-signature? This is an improper e-signature because:
Evaluation of Ex. 6 on the basis of just the practitioner's name:
Correspondence with an e-signature as set forth in Ex. 6 will be treated as unsigned. See Ex. 4A, 4B and 4C for signing "by" or "for" another attorney. Electronic Signatures, 37 CFR § 1.4 Example 6B Ex. 6B is the same as Ex. 6A, except that the signing practitioner separates his signature from the name of the inventor. The e-signature on the correspondence is:
QUESTION: Is this a proper e-signature? Answer: Yes This is a proper e-signature because:
Correspondence with an e-signature as set forth in Ex. 6B will be accepted. See Ex. 4A, 4B and 4C for signing “by” or “for” another
attorney. Electronic Signatures, 37 CFR § 1.4 Example 6C Ex. 6C is the same as Ex. 6B, except that the signing attorney signs for another patent attorney. This is a combination of Ex. 6B and 4B.
QUESTION: Is this a proper e-signature? Answer: Yes This is a proper e-signature because:
Correspondence with an e-signature as set forth in Ex. 6C will be accepted. See Ex. 4A, 4B and 4C for signing “by” or “for” another
attorney. /Able Quincy INVENTOR/ This is a preferred e-signature for someone who is not a registered practitioner. It is a proper e-signature because:
Below the signature: Nothing should be provided because anything that is provided is likely to cause confusion. Correspondence with an e-signature as set forth in Ex.
7A will be accepted. Electronic Signatures, 37 CFR § 1.4 Example 7B Situation: The inventor signed with an abbreviated middle name. The e-signature on the correspondence is:
Answer for Example 7B: Yes It is a proper e-signature because:
Requirements for the actual name below the e-signature:
Correspondence with an e-signature as set forth in Ex.
7B will be accepted. Note 1: If a person has a single letter (which is an
actual name and not an abbreviation) as part of their
actual complete name, then an e-signature with the single
letter (initial) as part of their name is acceptable and
nothing has to be typed immediately below the e-signature.
Electronic Signatures, 37 CFR § 1.4 Example 8 Situation: The e-signature includes script or italics. The e-signature on the correspondence is: Able Quincy Inventor Able Quincy INVENTOR [alternative text: signature is in a script font to imitate a pen and ink signature] QUESTION: Is this a proper e-signature? Answer: No This is an improper e-signature because:
If the script font e-signature were placed between 2 forward slashes, it might be acceptable. A script font is not recommended because it could be construed as a wet ink signature or it may not be legible. Correspondence with an e-signature as set forth in Ex. 8 will be treated as unsigned. Electronic Signatures, 37 CFR § 1.4 Example 9 Situation: The family name is presented first. The e-signature on the correspondence is:
QUESTION: Is any of the e-signatures in A or B above
a proper inventor’s e-signature? Answer: Yes They are both proper inventor's e-signatures because:
Correspondence with an e-signature as set forth in Ex. 9 will be accepted. Electronic Signatures, 37 CFR § 1.4 Example 10 Situation: The e-signature includes symbols. The e-signature on the correspondence is:
QUESTION: Is this a proper e-signature? This is an improper e-signature because:
Correspondence with an e-signature as set forth in Ex. 10 will be treated as unsigned. Electronic Signatures, 37 CFR § 1.4 Example 11 Situation: A title (e.g., Professor) is presented after the e-signature. The e-signature on the correspondence is:
QUESTION: Is this a proper e-signature? Answer: Yes This is a proper (but not recommended) e-signature because:
While adding a title after the e-signature is acceptable,
it is not recommended as it could cause confusion if the
title is inaccurate, inconsistent or misleading. Note: Including a title (e.g., /Able B INVENTOR, Professor/),
within the 2 forward slashes would also be acceptable,
but is not recommended). Electronic Signatures, 37 CFR § 1.4 Example 12 Situation: The e-signature is presented within multiple pairs of slashes. The e-signature on the correspondence is:
QUESTION: Is this a proper e-signature? Answer: No This e-signature is improper because: It has more than a single slash mark before, and after, the e-signature resulting in four forward slash marks.
Note: if Allen Inventor has a middle name, it must be provided. Correspondence with an e-signature as set forth in Ex. 12 will be treated as unsigned. Electronic Signatures, 37 CFR § 1.4 Example 13 Situation: Inventor obtains a customer number (CN) for his correspondence address in a pro se application. The e-signature on the correspondence is:
QUESTION: Is this a proper e-signature? Answer: Yes This is a proper (but not recommended) e-signature for an inventor who is a pro se applicant because:
While an inventor can adopt an electronic signature that is something other than their name, such a signature is not recommended because it requires accurately identifying their complete actual name in the correspondence. Note that patent practitioners must use their registered name as their e-signatures. See Examples 1 – 6. Correspondence with an e-signature as set forth in Ex. 13 will be accepted. Drawings May Be Submitted by Facsimile37 CFR § 1.6 Black and white drawings would be permitted to be transmitted to the Office by facsimile under § 1.6(d)(4); Exception: new applications including drawings cannot be faxed to the Office.
The Office has been permitting drawings to be transmitted via facsimile when they are accompanying the issue fee.
Petition Fees37 CFR § 1.17 Petition fees would be adjusted to more accurately reflect the Office’s current cost of treating petitions pursuant to 35 U.S.C. § 41(d). Three levels of petitions fees would be provided:
Copy Fees37 CFR § 1.19 Would set a fee for supplying copies of applications from the Office’s Image File Wrapper system (IFW)
Would provide option for the Office to create copies of patent application (paper or compact disc) from IFW rather than from the original source document supplied to the Office by applicant, §1.19(b). Would eliminate the current seven day requirement on the Office for processing copy requests, § 1.19(b). Would provide for copying material that is not imaged scanned, such as large blueprints, microfiche and video cassette, § 1.19(g). Would provide means for requesting copies of documents
in a form other than that normally provided, § 1.19(h). Small Entity 37 CFR § 1.27 Security Interests: would clarify that untriggered security interests in an application or patent (e.g., held by a large entity bank in return for financing) would not be a sufficient interest to bar entitlement to small entity status, §§ 1.27(a)(1), (a)(2)(i), and (a)(3)(i). SBA requirements: would clarify that certain Small Business Administration requirements relating to a location in the U.S. or making a significant contribution to the U.S. economy would not apply to patent applicants, §1.27(a)(2)(ii). Translations 37 CFR §§ 1.52, 1.55, 1.78 For translations, the statement that the translation is accurate would now be required to be signed by the individual who made the translation. See the proposed changes to §§1.52(b)(1)(ii) and (d)(1), § 1.55(a)(4), §1.69(b) and §1.78(a)(5)(iv). Font Size 37 CFR §§ 1.52, 1.58 A font size of 12, which is approximately 0.166 inches or 0.422 cm high, would be recommended for text in a patent application. See the proposed changes to §1.52(b)(2)(ii) and § 1.58(c). Compact Discs, New Page Limits 37 CFR § 1.52 If a table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length, they would be able to be submitted on compact discs (CD-R or CD-ROM), § 1.52(e). Claim for Foreign Priority 37 CFR § 1.55 If the latest application in a chain of applications claims a foreign priority but it is filed more than 12 months after the foreign application, then
Example: Foreign application filed 1/8/04. Nonprovisional application 1 filed 1/5/05 and Nonprovisional application 2 filed 10/3/06. Nonprovisional application 1 as well as Nonprovisional application 2 would need to have a claim for foreign priority. Incorporation By Reference 37 CFR § 1.57 (A New Rule) - Priority & Benefit Claims Priority/benefit claims would act as a limited incorporation by reference of a prior application. Omitted portion of the specification or drawing(s) could be added to the application (§ 1.57(a)) where:
The examiner would be able to require an English language translation of the prior-filed application and identification of where the omitted portion can be found in such application, § 1.57(a)(1). Incorporation By Reference 37 CFR § 1.57 (A New Rule) - Essential Material Essential material to be incorporated would require specific trigger language:
Would be able to incorporate essential material in a U.S. patent application publication (as well as U.S. patent), which does not itself incorporate such material, § 1.57(c):
A definition for essential material based on 35 U.S.C. 112 paragraphs 1, 2 and 6, and §§ 1.57(c)(1)-(3) would be established. Examiner would be able to require a copy of incorporated material along with a statement that the copy consists of the same material incorporated, § 1.57(e). Tables 37 CFR § 1.58 Would prohibit a table from being included in both the drawings and in the body of the specification, §1.58(a). Would require that correct visual alignment of rows and columns of chemical and mathematical formulae and tables be retained when the electronic file is rendered by opening and displaying the electronic file at the Office using a text viewer program, § 1.58(b). Would recommend a font size of at least 0.166 inches or 0.422 cm., § 1.58(c).
All application data sheets would be required:
Consequently, supplemental application data sheets would be required to include all information including information that is not being changed.
Domestic Priority 37 CFR § 1.78 Would clarify that the prior art exception in 35 U.S.C. 103(c) (common assignee) does not apply to double patenting rejections, § 1.78(c):
Multiple sentences (rather than a single sentence) would be permitted when reciting benefit claims to make it easier and clearer to set forth relationships, for example:
Drawings 37 CFR §§ 1.83, 1.84 and 1.165 Tables and sequence listings that are in the specification would not be permitted to also be included in the drawings, § 1.83(a). Would remove requirement for submission of a black and white copy of any color drawings or photographs, §§ 1.84(a) and 1.165(b). Identification (labeling) of the drawings would be recommended, but not required, and, if provided should be on the front of each sheet, to the left of the center on the top margin, § 1.84(c). Models, Exhibits, and Specimens 37 CFR §§ 1.91 and 1.94 Models, exhibits, or specimens that cannot be stored in the application file as they are not in compliance with § 1.52:
Information Disclosure Statement 37 CFR § 1.98 Where applicant is not using an Office IDS form (PTO-1449 or PTO/SB/08A or B) applicant would be required to include, § 1.98(a):
Advancement of Examination, 37 CFR § 1.102 Would permit an application to be made special, by rule, based on an invention's ability to counter terrorism, without the current fee to make such application special, § 1.102(c). Requirements for Information 37 CFR § 1.105 Would add a (nonlimiting) example as to what applicant could be questioned about relating to technical information known to applicant concerning (§ 1.105(a)(1)(viii)):
Form for the presentation of a requirement for information would be identified as any appropriate form and three examples given (§ 1.105(a)(3)):
Where applicant is asked for an opinion, a response
that an opinion is not held by the party from which it
was requested would be accepted as a complete reply (§1.105(a)(4)). Supplemental Replies 37 CFR § 1.111 Supplemental replies, § 1.111(a), would no longer be entered as a matter of right. Supplemental replies would be entered if:
The status of supplemental replies would be similar to the way after final amendments are treated. This should eliminate a significant burden on the Office
caused by a small percentage of applicants who do not
file an appropriate reply as required by § 1.111. Preliminary Amendments 37 CFR § 1.115 Preliminary amendments filed on (or prior to) the filing date of the application would automatically be part of the application, § 1.115(b):
If a preliminary amendment filed on (or prior to) the filing date of the application, § 1.115(b):
The change would provide a consistent way of treating preliminary amendments, eliminate the need for filing a petition and save processing time. A preliminary amendment seeking cancellation of all claims without presenting any new claims would be disapproved.
Extensions of Time 37 CFR §§ 1.136, 1.550, 1.956 Extensions of time for sufficient cause would require a § 1.17(g) petition fee of $200:
Reissue Applications 37 CFR §§ 1.137, 1.175, 1.178, 1.179 Clarification that a terminal disclaimer would not be required when reviving an abandoned reissue application (regardless when the application was filed), § 1.137(d)(3). Clarification that, where the parent reissue has not been abandoned, a new oath or declaration would be required for any continuation thereof identifying at least one error being corrected that is different from the error(s) being corrected in the parent reissue, § 1.175(e). Would eliminate requirement for physical surrender of the original patent, § 1.178. Would eliminate notification in the patent file that a reissue application has been filed and that reissue examination has been terminated. Public PAIR now provides this information. §1.179 would be removed and reserved. Nonpublication Request 37 CFR § 1.213 Would clarify: To support a nonpublication request, the certification, that "the invention disclosed in the application has not and will not be the subject of an application filed in another country…,":
Notice of Foreign Filing 37 CFR § 1.213 Notice of foreign filing is independent of rescission:
Rescission 37 CFR § 1.213 Would clarify that a request to rescind a nonpublication request is not appropriate unless:
Would notify practitioners who file a request to rescind a nonpublication request in applications for which a nonpublication request was never filed that they:
Patent Application Publication 37 CFR § 1.215 Would recite a new alternative time frame of one month after the mailing of the first Office communication that includes a confirmation number, § 1.215(c), to submit:
Protests 37 CFR § 1.291 Would provide that protests may be filed at any time if accompanied by the written consent of the applicant, as provided by 35 U.S.C. 122(c), § 1.291(b)(1)(ii). Would require that the real party in interest must be identified when filing a protest, except if anonymity is desired:
For second or subsequent protests by the same party, to ensure consideration, an explanation would be required to state why:
Notice of Allowance 37 CFR § 1.311 Exception that permits charging of issue fee to earlier supplied deposit account authorization would be expanded to include:
Would clarify that the exception would only apply where the preauthorization was to the appropriate fee due. Patent Term Adjustment Determination 37 CFR § 1.705 Patentee would be able to request reconsideration of a patent term adjustment indicated in an issue notification letter, for events occurring after the mailing of a notice of allowance, within 30 days of the date that the patent issued where a patent indicates a revised patent term adjustment:
Requests for reconsideration would continue to be dismissed
as untimely for issues previously raised or issues that
could have been raised in the determination provided with
the mailing of the notice of allowance. Changes in Support of 21st Century Strategic Plan Initiatives The following concepts are the drivers behind the Strategic Plan and examples are given of the rules that embody them:
When submitting comments, the above concepts should be kept in mind. Time Schedule for Final Rule November 12, 2003 - Comment period closes.
January 16, 2004 - Projected completion of consideration of comments and drafting of Final Rule:
March 28, 2004 - Projected completion of clearance and publication of Final Rule. May 28, 2004 - Projected Effective Date of Changes. Contacts Office of Patent Legal Administration (OPLA):
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