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M ARVIN PETRYR OSS F. HUNT, JR.W ILLIAM E. JACKSON*D OUGLAS E. JACKSON*B REWSTER B. TAYLOR*B . AARON SCHULMAN*L INDA R. POTEATEK EVIN R. KLEINJ ONATHAN G. BROWN** BAR OTHER THAN VA |
L ARSON & TAYLOR, PLCA PROFESSIONAL LIMITED LIABILITY CORPORATION T RANSPOTOMAC PLAZA1199 N . FAIRFAX ST.S UITE 900A LEXANDRIA, VIRGINIA 22314-1437T ELEPHONE (703) 739-4900F ACSIMILE (703) 739-9577email: djackson@larsontaylor.com |
O F COUNSELW ALTER C. GILLIST HOMAS P. SARRO* E. FULTON BRYLAWSKIR OBERTS B. LARSON (1904-1984)A NDREW E. TAYLOR (Retired)I NTELLECTUAL PROPERTY LAWI NTERNETwww.larsontaylor.com iplaw@larsontaylor.com |
November 10, 2000
*
RE: Changes to US Patent Application Practice - Our Comments
Dear Colleagues:
The US Patent Office has recently issued new rules changing US practice. These rules take effect at different dates, so that the new rules which will be of interest to you and our comments will be listed by effective date and 37 CFR section number (in case you want to look up the full section itself) hereafter. Thereafter, we will also discuss other changes of interest which have been effected or will be shortly.
EFFECTIVE September 8, 2000
§ 1.27 Small Entity status: established by a written assertion of attorney/agent; must be established in each subsequent application as well; paying of small fee for new application is considered an assertion.
We have had success so far in merely asserting this status without filing of an SES declaration.
§ 1.155 Expedited Examination of Design Applications: now available for a $900 fee. Starts at filing, not when case is given to examiner as in "special" utility applications. A search must also be made and reported at time of filing of request.
EFFECTIVE November 7, 2000
§ 1.28: SES refund - refund of large entity fee must be made within three months of payment (formerly was two months).
§ 1.41 Applicant: inventors listed on international stage application must be listed on declaration, or a petition to change inventorship is required (see § 1.48(a) and § 1.497(d)).
§ 1.44: this section has been deleted, so that proof of the power of authority of a person signing as legal representative (as in a declaration) is no longer required. (see § 1.64)
§ 1.52: application papers must start with page number "1";
• PTO wants paragraphs of disclosure numbered (not line numbers - but can still use line numbers), located beginning at the left margin, of four digits, surrounded by brackets, and bolded e.g. [0001]; section headings are not considered paragraphs; - this requirement is made in anticipation of the new amendment procedure to take effect March 1, 2001 (see below).
• the following documents can be submitted on a labeled CD (enclosed in hard case): computer program listing (duplicate required), sequence listing, table of more than 50 pages (duplicate required); such documents must be incorporated by reference in the application;
§ 1.63 Oath or Declaration: a separate data sheet (see § 1.76) can now provide/change most data without inventor signature!
At the present time, the Patent Office has not finalized the form which must be used (it is expected shortly). Further, we have determined that the new application clerks who will be responsible for accepting this form have no idea what it is. Therefore, we will recommend using of a usual declaration form to provide this information for the time being - hopefully in the next couple of months the form will be finalized and the clerks trained to accept it in lieu of a declaration.
§ 1.72: Abstracts must now be less than 150 words (as in the PCT).
§ 1.76 Application Data Sheet: to be submitted without inventor(s) signature;
• may include applicant information (name, residence, address, citizenship), correspondence information, application information (title, number of drawing sheets, docket number, etc.), representation information (customer number), domestic/foreign priority information.
• may also be used to update/correct the information previously provided.
Please see above § 1.63 discussion!
§ 1.85 Correction of Drawings: no extensions available when required in/with Notice of Allowance.
We will thus continue our practice to effect new drawings after the Notice of Allowance is received after one month, unless we hear to the contrary.
§ 1.104: Examiner’s Statement of reasons for allowance - unless applicant replies thereto, there is a presumption of acquiescence to those reasons (previously, this rule indicated that no presumption arose, but this was not in accordance with the present case law so that is why the previous indication has now been removed).
EFFECTIVE March 1, 2001
§ 1.121 Manner of Making Amendment: changes to specification will be made by paragraphs substitutions, supplying the PTO with a clean/corrected paragraph on one sheet and on another sheet a marked up copy of the paragraph showing changes made (see * below);
• change to claims will be made by claim substitutions, supplying the PTO with a clean/corrected claim on one sheet and on another sheet a marked up copy of the claim showing changes made (see * below) and identified in the usual manner (amended, twice amended, etc.);
• cancellations of paragraphs or claims are made simply by direction to do so (with other marked up paragraphs/claims if a sheet containing those is submitted - see * below);
* the PTO also suggests the clean copy of the claims include all pending claims (for ease of their final scanning for publication).
In order to reduce costs of amendments once this change takes place, it will be advantageous to provide us with an electronic copy of the application, such as at the time of filing or of the preparation of the amendment to save on costs associated with re-typing of the original specification/claims. We have been generally successful with receiving email electronic copies and disc copies where the document is saved in WORD.
Publication of New Applications - Filed After November 29, 2000
The Patent Office has also recently issued its rules on the publication of new applications at 18 months from the filing date or priority date. These rules apply to new applications filed after November 29, 2000, including continuation applications (or CPAs). If it is desired not to have a new application published, a request for non-publication must be made at the time that the application is filed. It will be noted that such a request is not permitted if the application will or has been filed in another country and the corresponding application will be published in that other country (the usual case where priority is claimed).
A speeded up publication procedure is also available if publication is desired prior to 18 months. To take advantage of this procedure for early publication, the application must be provided in electronic form (including drawings).
Patent Term Adjustment
The Patent Office has recently issued the final rules to be followed for extending the term of a patent when the Patent Office has delayed action. However, any term extension due to the Patent Office’s fault will be reduced by any avoidable delay in prosecution by applicant (typically the obtaining of an extension of time, but it could also be such things as filing of a preliminary amendment just before an action is mailed so that a new action must be mailed). This reduction will be by the number of days delayed, so for an extension of time between the due date and the filing date of the required response; and this applies as well to delays incurred which are under control of applicant. As any patent term extension is applied at the end of the regular term, any patent term extension is probably occurring at the most lucrative time for any license, so avoiding any reductions of an extended term should be avoided. On the other hand, most patents (95% patents by PTO estimates) would not have been eligible for a patent term extension under the recent PTO practice, so the odds of incurring a loss of any term extension for an application are small in each case (and considering that less than 2/3 of the last maintenance fee for patents are paid, there is only a small fraction of patents that will have an extension that will end up extending the base term).
Electronic Filing
New applications can now be filed electronically - though the final software and procedures are to be set shortly. Our experience in the past is that any new system at the Patent Office, even after a long trial period (which has now concluded), experiences various complications ranging from minor to major when full implementation occurs. For that reason, we do not plan to effect any electronic filings as a matter of course until the system has shown consistent and error-free usage.
§ 102(E) Date For Continuations Of International Stage Pct Applications
Also of note to you is that the Patent Office has (some months ago) altered its policy on the § 102(e) date, which will be given to continuation applications, based on international stage PCT applications. Rather than the filing date of the PCT application as was done in the past, continuation applications will now be given a § 102(e) date as of the filing date of the continuation application (declaration is not required).
This change in the Patent Office policy was evidently brought about at least in part due to a legal challenge to the old policy. At this time, we do not know whether the new policy will be retroactive to all pending applications, just prospective to new applications, or some other scheme. This was announced with little notice or details (which the Patent Office may not have decided on yet).
In our previous general letter on this subject, we noted that there was some uncertainty whether the Patent Office might change (or be forced to change) their position on the effective § 120(e) date. At that time, we noted that if an early § 102(e) date is of major importance, and a priority application is being filed (and this now applies as well to a first filing in the PCT), an even earlier and definitely valid § 102(e) date can be obtained as follows. When the priority application is filed, either a regular US application or a provisional US application can be immediately filed to obtain a § 102(e) date. Obviously, the advantage of postponing costs by using a PCT application and of obtaining a search report are lost if this is done, but the US filing and prosecution costs can still be postponed for almost a year from the priority application filing date, if desired, by paying only the provisional application costs. And with a provisional application, the 20 year patent period does not begin until the regular application is filed.
While a regular US application can also be filed at the time of filing of the PCT application based on a priority application, the PCT application will publish at 18 months so it should be determined whether the six months or so earlier § 102(e) date is worthwhile.
If you have any questions on these changes, please let me know.
With best wishes.
Sincerely,
LARSON & TAYLOR, PLC