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PBG - FINAL RULE Questions & Answers (Q & A's) |
A. 37 CFR 1.27 - Small Entity Status (Updated 11/8/01) |
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A. 37 CFR 1.27 - Small Entity Status A1. If an application is filed prior to September 8, 2000 with the small entity basic filing fee and an assertion that the applicant is a small entity, but no small entity statement in compliance with former 37 CFR 1.27: (1) what must the applicant do to establish small entity status; (2) is a surcharge under 37 CFR 1.16(e) (or (l)) required; and (3) does it matter whether the Office has issued a Notice to File Missing Parts of Application as of September 8, 2000? (1) Nothing is necessary to establish small entity status. The change to 37 CFR 1.27 applies to the application as of September 8, 2000, that is, the applicant is considered to have established small entity status in the application on September 8, 2000.A2. I tried to access the PTO form site to download a small entity form for a small business and have found out that the Office is no longer making any of the four small entity forms available. Must I apply for small entity status only by payment of the small entity basic filing fee? Back to TopNo. The Office recommends that you not rely solely on the payment of the exact small entity amount for the basic filing fee (although you can so rely).A3. Although the Office no longer makes available the four small entity forms, can I still use them (as I have a blank electronic or paper copy) if I desire to do so? B. 37 CFR 1.72 - Title and Abstract B1. Must the title of the invention appear as a heading on the first page of the specification? Back to TopNo. The title of the invention is not required (nor has it been under the previous version of §1.72) to be part of the specification. To the extent that practitioners feel an important identification purpose is served by supplying a title on the specification, it should appear as a heading on the first page of the specification. Alternatively, the title may now be supplied in an application data sheet (§ 1.76).B2. How long may the abstract be?The abstract may not exceed 150 words in length. This is a departure from the former 37 CFR 1.72, which allowed an abstract to be up to 250 words in length. The reduction in the number of words allowed in the abstract is necessary to harmonize USPTO practice with PCT guidelines.B3. What will happen if an application is filed with an abstract that has more than 150 words?When an application is originally filed with an abstract having more than 150 words, the Office of Initial Patent Examination (OIPE) will send applicant a notice to correct the abstract (with a period for reply of two months). The application file will be held in OIPE and not released to the assigned Technology Center for examination until an acceptable abstract is filed. The mere presence of an abstract which fails to comply with amended § 1.72 will not prevent an application from being accorded a filing date. It will, however, delay the initiation of the examination. Failure to comply to the notice within 3 months, in an application subject to Patent Term Adjustment, may cause a reduction of any patent term adjustment. C. 37 CFR 1.184 - Standards for Drawings C1. Why are all applications with drawings reviewed in the Office of Initial Patent Examination? Can applications which are not going to be published as part of the pre-grant publication process be reviewed later? Back to TopAll applications with drawings need to be reviewed in OIPE to determine whether the drawings are capable of reproduction (can be copied and/or scanned in black and white) and are in the English language. Further compliance with 37 CFR 1.84 will not be required by OIPE. Reproducable drawings are required even if an application is not going to be published, so that the Office will be able to provide a certified copy of the application for foreign priority and other purposes. Furthermore, since applicants may rescind a non-publication request, all applications need to be reviewed according to the same standards regardless of whether they are to be published. In addition, an English translation of the application is required pursuant to 37 CFR 1.52(d)(1). Aside from the non-English text and for the need to have a black and white copy of color drawings/photographs in plant applications (see 37 CFR 1.165(b)), this drawing review during scanning is the same review that has been performed for several years. The Office does not anticipate requiring very many more drawing corrections in OIPE as a result of pre-grant publication. D. 37 CFR 1.121 - Amendment by Paragraph Replacement D1. If an applicant elects to utilize optional paragraph numbering as per § 1.52(b)(6), would amendments to the specification (under §1.121) which add new paragraphs require a renumbering of all the paragraphs?Back to TopNo. If the method for numbering paragraphs suggested by the Office is used, a single new paragraph replacing a single original paragraph would retain the same number as the paragraph being replaced. If more than one paragraph replaces a single original paragraph, the additional paragraphs would be numbered with sequential integers following a single decimal, e.g., [0071], [0071.1] and [0071.2] would replace original paragraph [0071]. Original unamended paragraphs before and after the affected paragraph would retain their original numbering.D2. Are there software products currently on the market which will automatically number paragraphs?Yes. At the very least, recent releases of Word (Office 97 or later) and WordPerfect (9.0) have features for automatically numbering paragraphs.D3. What is the effective date for implementing the requirements for amendments by replacement paragraph/claims?Mandatory compliance with the revised rule is not required until March 1, 2001. It is suggested, however, that applicants adopt the revised procedures on or after November 7, 2000, in order to adjust to the changes in amendment practice. The time period prior to November 7 will be used by the Office to train technical support personnel on the changes of the new rule.D4. How do I amend claims which were previously amended prior to the change to 37 CFR 1.121? E. 37 CFR 1.322 - Certificate of Correction of Office Mistake E1. Under what conditions may the Commissioner issue a certificate of correction to correct a mistake in a patent incurred through the fault of the Office? Back to TopThe Commissioner may pursuant to 35 U.S.C. 254 issue a certificate of correction to correct a mistake in a patent incurred through the fault of the Office, which mistake is clearly disclosed in the records of the Office, (1) At the request of the patentee or the patentee's assignee, (2) Acting sua sponte for mistakes that the Office discovers, and (3) Acting on information about a mistake supplied by a third party.E2. Do third parties have standing to demand that the Office issue or refuse to issue a certificate of correction?No. Third parties do not having standing to demand that the Office issue or refuse to issue a certificate of correction. See Hallmark Card, Inc. v. Lehman, 959 F. Supp. 539, 543-44, 42 USPQ2d 1134, 1138 (D.D.C. 1997). The Office is, however, cognizant of the need for the public to have correct information about published patents and may therefore accept information about mistakes in patents from third parties and may issue certificates of correction based upon that information (whether or not it is accompanied by a specific request for issuance of a certificate of correction).E3. Where third parties submit information or a request for a certification of correction, will the Office correspond with the third parties about their submission or request?No. The Office does not intend to correspond with third parties about the information they submitted either to inform the third parties of whether it intends to issue a certificate of correction or to issue a denial of any request for issuance of a certificate of correction that may accompanying the information. The Office will confirm to the party submitting such information that such information has in fact been received by the Office if a stamped, self-addressed post card has been submitted. See MPEP 503. The status of the patented file, including issuance of any certificate of correction, may be monitored via the web using the Patent Application Information Retrieval (PAIR) system.E4. Is there a fee for submission of information by a third party?No. A fee has not been imposed for submission of information by a third party.E5. Will papers containing a submission of information or request for a certificate of correction submitted by a third party be made record of and kept in the patent file?No. Papers containing a submission of information or request for a certificate of correction submitted by a third party will not be made of record in the file that they relate to or be retained by the Office.E6. Will all mistakes incurred by the Office and identified by the patentee, the patentee's assignee, the Office, or a third party be corrected?No. The Office intends to retain its discretion and may not issue a certificate of correction even if a mistake is identified, particularly if the identified mistake is not a significant one that would justify the cost and time to issue a certificate of correction.E7. Where the Office discovers a mistake or receives a submission of information or request for a certificate of correction from a third party, will the patentee be notified prior to the issuance of any certificate of correction?Yes. The Office will not issue a certification of correction under 37 CFR 1.322 without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard. F1. I noticed that the recently modified declaration forms (PTO/SB/01, PTO/SB/03 and PTO/SB/04) no longer have language to appoint an attorney or authorize an agent. How do I appoint a power of attorney or authorize an agent when filing my application? To appoint a power of attorney or authorize an agent to act for you, you can use form PTO/SB/81 "Power of Attorney or Authorization of Agent" (also on the USPTO's printable forms website). The power of the attorney portion was removed from the declaration forms because while all the inventors must sign a declaration form, it is not always required that all the inventors sign a power of attorney. For example, it is acceptable to have the assignee(s) appoint the power of attorney. See 37 CFR 3.71. The combined declaration and power of attorney forms will still be accepted by the Office. F2. I noticed that the new declaration forms no longer have a box to claim domestic priority under 35 U.S.C. 119(e) and 120. Why was this deleted from the forms?The domestic priority box was removed from the declaration forms because it is not required by the statutes or by the related rules to state a domestic priority claim in the declaration. The presence of this box created confusion, and may have caused unnecessary objections to declarations when this box was not filled out and applicant was indeed claiming domestic priority to another application. To claim domestic priority under 35 U.S.C. 119(e) and 120, applicant must comply with 37 CFR 1.78 which requires, in part, that the priority claim information be in either the first line of the specification or in an application data sheet. F3. Why were the small entity forms (PTO/SB/9-12) deleted from the website and how do I now claim small entity status?Back to TopThe small entity forms were deleted because effective September 8, 2000, small entity status can be established at any time by a simple written assertion of entitlement to small entity status. Specific forms, like PTO/SB/9-12, are no longer required but the Office will still accept them as a written assertion of entitlement to small entity status. The Office will liberally construe any written reference to small entity status to be a request for small entity status. Several PTO forms, such as the transmittal forms (PTO/SB/5,17,21,50 and 56) and the provisional cover sheet (PTO/SB/16), have been modified to include a box which can be checked to establish small entity status. For more information, see "Simplified Small Entity Status Practice" at http://www.uspto.gov/web/offices/dcom/olia/pbg/cpr.htm. G1. If amendment by paragraph replacement is now required by the Office for amendments submitted during prosecution, how should I amend the specification in a reissue application at the time of filing? Amendment of a reissue specification at the time of filing can be accomplished either by (1) paragraph replacement in a preliminary amendment, or (2) “cut and paste” of a two column copy of the original patent, whereby minor changes are inserted at a cut portion of a column and the remainder of the column rejoined. Unlike amendment practice for non-reissue applications, no clean copy of a replacement paragraph should be submitted; rather, underlining and bracketing (to show additions and deletions, respectively) must be employed in the paragraph to be inserted. No accompanying marked-up version of the amended paragraph should be submitted.G2. Can I merely make a request for transfer of drawings (from the patent file to the reissue application) to satisfy the drawing requirements for a reissue application?The Office will no longer grant or act on a request for transfer of drawings. If good quality copies of the patent drawings are submitted at the time of filing, and the drawing copies satisfy the requirements of § 1.84, the copies will be accepted in lieu of formal drawings, and the reissue patent will be printed using the copies of the drawings.G3. If a reissue application is filed which broadens the claims of the invention of the original patent as well as adds claims to a different invention, will the broadened claims of the original invention still be considered to be constructively elected under revised § 1.176?Yes. Even though the original patent claims have been broadened, they are still considered as being drawn to the same invention as was claimed in the original patent. Short of a disclaimer of the original claims being filed in the reissue application, claims to the invention claimed in the original patent (even if broadened) will always be considered the elected invention in a first reissue application which additionally contains claims to another invention. If the constructively elected broadened claims correct a legitimate error in the original patent, the first reissue application may be able to issue prior to the completed examination of any later filed divisional applications. If no error is corrected by the constructively elected claims, and the claims are found to be allowable, prosecution of the first reissue application may have to be suspended pending the completion of the examination of any later filed divisional application, at which time the claims will be recombined into a single application for issuance.G4. If multiple reissue applications are filed, into which application should the original patent claims be placed, and how should the claims be numbered in each of the applications?The original patent claims should be submitted in each of the multiple reissue applications as either (1) unamended, (2) amended (including underlined and/or bracketed material, or (3) deleted (bracketed) claims. They should retain their original numbering in each of the multiple reissues. Claims added to any of the reissues should be numbered beginning with the next highest number following the last original claim. Unamended original claims may only appear in one of the reissue applications for examination.
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