Best Practices - Suggestions and Tips: Avoid The Most Common Mistakes Made By Practitioners:

Andrew Faile,
Director TC 2600

Avoid Mistakes Throughout Prosecution

• Tips and Suggestions
• Preparing the Application
• Filing the Application
• Avoiding Publication Pitfalls
• Examination Processing Tips
• Post Allowance Tips
• Best Practice Tips (see Appendix)

Preparing the Application

• Avoid submitting an application in the European problem/solution format.
• Format the application according to US rules and procedures. See MPEP § 608
• Avoid including multiple dependent claims that depend from other multiple dependent claims
• Craft claims according to US practice, see MPEP § 608.01(n)
• Avoid including “Use” claims
• Craft claims according to US practice, see MPEP § 608.01(k)

Pre-Examination Tips

Forms

• Do use USPTO forms without altering the language.
• Do not use a combined declaration and power of attorney form.
• USPTO forms can be found at: http://www.uspto.gov/web/forms/index.html

Application Data Sheets

• Do use an Application Data Sheet (ADS), although an ADS is not required. Customers using an ADS can expect two advantages when applying for a patent: 
1. Improved accuracy of filing receipts.
2. Accurately recorded application data.
• Use of a supplemental ADS is possible even though no original ADS was submitted on filing.
• The following information can be supplied on an ADS:
• Application Information
• Applicant Information
• Correspondence Information
• Representative Information
• Domestic Priority Information
• Foreign Priority Information
• Assignment Information

Preliminary Amendments In New Applications

• Avoid submitting Preliminary Amendments on filing
• A substitute specification will be required if a preliminary amendment present on filing makes changes to the specification, except for:
• Changes to title, abstract, claims or addition of benefit claim information to the specification
• See the notice “Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application,” 1300 Off. Gaz. Pat. Office 69 (November 8, 2005), available at:
http://www.uspto.gov/web/offices/com/sol/og/2005/week45/patrevs.htm

Preliminary Amendments in Continuations and Divisionals

• Avoid submitting Preliminary Amendments on filing a Continuation or Divisional
• Avoid Preliminary Amendments that cancel all the claims and add new ones

Filing the Application

• Select a method of filing the application
1. Accelerated Examination
2. EFS-Web
3. Traditional Mail Route
• Accelerated Examination Common Failings
• Failure to provide the text search logic. A mere listing of terms will not suffice.
• Failure to search the claimed invention. The petition for accelerated examination may be dismissed if the search is not commensurate in scope with the claims.
• Failure to show support in the specification and/or drawings for each limitation of each claim.
• Failure to show support in the specification and/or drawings for each limitation of each claim for every document whose benefit is claimed.
• Failure to specifically identify the limitations in each claim that are disclosed in each reference.

EFS-Web Filing

• Avoid coding (identifying) a Request for Continued Examination (RCE) as an “Amendment” when filing an RCE
• Avoid identifying papers after the initial filing as “new”
• Avoid common PCT filing mistakes
• Avoid filing color images or images that have a resolution higher than 300x300 dots per inch (dpi)

Avoid Publication Pitfalls

Nonpublication Requests

• Avoid inconspicuous requests for nonpublication.
• Publication will generally include all preliminary amendments submitted in time to be included in the publication.
• If amendments to the specification are desired to be included in publication, submit a substitute specification.

Publication Corrections

• Practitioners must include the assignment information in the transmittal letter or ADS.
• Avoid misspelling the names of inventors or assignees.
• Review the filing receipt promptly so that corrections can be requested before publication or export of data for publication.
 
• Avoid filing requests for Corrected Publication 37 CFR § 1.221(b) that fail to recite material errors.

Examination Processing Tips

General Prosecution Advice

• Amendments to the claims and/or specification should be accompanied by a written statement indicating specific support for the change. If the support is implicit, an explanation is beneficial.
• In response to restriction requirements, where inventions are indeed patentably indistinct, applicants should present arguments to that end.
• Read the entire prior art reference cited by the examiner, not just the part relied upon by the examiner in the rejection.

Pre-Appeal Brief Conference

• Avoid sending the request separate from the Notice of Appeal.
• Avoid making a request when there is an outstanding after-final amendment.
• Avoid attaching more than five pages to the cover form.
• Avoid sending in a supplemental request.
• Avoid paying a second Notice of Appeal fee in the application.

Filing of Continuation-in-Part (CIP) Applications

• Consider prosecuting an improved CIP invention independently of the prior invention:
• File, if need be, a continuation only to the original invention, or take an appeal on the original invention, and
• File a new application, rather than a CIP, for only the new invention:
• without a benefit claim (35 U.S.C. §120, 37 CFR § 1.78) to the initial application, and
• therefore without shortening the patent term of the initial invention if it were to be included in the CIP application, as
• any benefit claim in a CIP cannot protect the new invention.

Post Allowance Tips

Issue Fee Payments

• Avoid filing an Information Disclosure Statement (IDS) after payment of the issue fee.
• File an IDS filed after payment of the issue fee with a Petition for Withdrawal from Issue (37 CFR 1.313(c)) and an RCE (37 CFR § 1.114). Otherwise, the IDS will be placed in the file and the cited documents will not be considered by the examiner.
• Avoid delays in paying the issue fee.
• The issue fee payment may be submitted via facsimile to the Office of Patent Publications ((571) 273-2885) or EFS-Web to ensure the payment is received within the non-extendable time period set forth in the Notice of Allowance and Fee(s) Due (PTOL-85).

Withdrawal from Issue

• Petitions to Withdraw from Issue may be hand carried or sent via facsimile to the Office of Petitions.
• Hand carries should be brought to the security guard station of the Madison West building, 600 Dulany Street, Alexandria VA 22314.
• The facsimile number for the Office of Petitions is (571) 273-0025.
Note: All other types of petitions must be directed to the Central FAX ((571) 273-8300).

Thank You.

APPENDIXBEST PRACTICES

Best Practices

Use of S-signatures (37 CFR § 1.4(c)(2))

• A practitioner creates a document and S-signature signs it on his/her PC. The practitioner can then:
  • Facsimile transmit the document directly from the PC to the Office; or
  • Print the document and then facsimile transmit, mail, or hand-carry the document to the Office.
• An affidavit under 37 CFR § 1.132 is S-signed by the party making the affidavit, the S-signed affidavit is then:
• Electronically sent to the practitioner, e.g., via an e-mail. The practitioner can then facsimile transmit, mail or hand-carry the S-signature signed document to the Office.
• Power of Attorney Tips:
• Do direct a Power of Attorney to the Attorneys Associated with the Customer Number to the Customer Number
• Do provide a separate Power of Attorney and a separate Oath/Declaration
• Priority Document Exchange Tips
• Do provide a valid power of attorney with a submission for permission to access
• Only the designated attorney or agent may grant permission to access.

Fee Payment Tips

• Avoid placing a stop payment on a check for USPTO services or to circumvent the rules of practice. This action is not appropriate.
• Request a refund (37 CFR § 1.26) where fees were paid by mistake or in excess of the amount required.
• Avoid drafting a check to the USPTO for services on an account with insufficient funds.
• Ensure that the account from which the check is drawn contains sufficient funds prior to submitting the check to the USPTO.

Fee Payment Tips

• Do use a Deposit Account Number on a transmittal form authorizing payment
• Do not use a Customer Number to authorize payment of fees.
• Be clear with payment authorization statements.
• Avoid contradictory statements on payment

Maintenance Fees/Deposit Accounts

• Maintenance fees and replenishing of deposit accounts at the USPTO can be done online: https://ramps.uspto.gov/eram
• Inquiries related to deposit accounts, maintenance fees and refunds may be directed to the Office of Finance (571) 272-6500.

Prosecution Tips

• Proofread claims for clarity and precision
• Present all cogent arguments and evidence before final rejection
• If the examiner is believed to be ignoring a claim limitation, a personal or telephonic interview may facilitate the prosecution to completion.
• Don’t initiate a response on the absolute last day of the statutory period, if possible.
• Don’t personally attack the Examiner in a response to Office Action.
• Follow the chain of command for assistance:
• First, call the Examiner.
• If he or she is non-responsive or unavailable, contact the Supervisor.
• If the issue is still not resolved, contact the Technology Center Director.

Further Information

Helpful Web Pages:
• Notices, Recent Patent-Related – a very current list of all Federal Register, Official Gazette and pre-Official Gazette notices, and certain Office memoranda: http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
• Forms Page – current USPTO forms available for use by the Public: http://www.uspto.gov/web/forms/index.html
• Manual of Patent Examining Procedure (MPEP): http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
• Mailing Addresses and Mail Stops: http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm
• Facsimile Numbers: http://www.uspto.gov/web/offices/com/sol/og/2005/week42/patcorr.htm
• USPTO Glossary: http://www.uspto.gov/main/glossary/index.html