New Qs & As with posted date of 5/5/03: CAF2

A. Request for Continued Examination (RCE)

A1. What is a request for continued examination (RCE)?

Section 4403 of the “American Inventors Protection Act of 1999” amends 35 U.S.C. § 132 to provide, at the request of the applicant, for continued examination of an application for a fee (request for continued examination or RCE practice), without requiring the applicant to file a continuing application under 37 CFR 1.53(b) or a continued prosecution application (CPA) under 37 CFR 1.53(d).

To implement RCE practice, the Office has added 37 CFR 1.114 to provide a procedure under which an applicant may obtain continued examination of an application by filing a submission and paying a specified fee, even if the application is under a final rejection, appeal, or a notice of allowance.

For the Final Rule, see Request for Continued Examination Practice and Changes to Provisional Application Practice; Final Rule, 65 FR 50092 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000).

For the Interim Rule, see Changes to Application Examination and Provisional Application Practice, Interim Rule, 65 FR 14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000).

A2. To what applications do the RCE provisions of 37 CFR 1.114 apply?

The provisions of 37 CFR 1.114 apply to utility or plant applications filed under 35 U.S.C. § 111(a) on or after June 8, 1995, or international applications filed under 35 U.S.C. § 363 on or after June 8, 1995. The request for continued examination provisions of 37 CFR 1.114 do not apply to: (1) a provisional application; (2) an application for a utility or plant patent filed under 35 U.S.C. § 111(a) before June 8, 1995; (3) an international application filed under 35 U.S.C. § 363 before June 8, 1995; (4) an application for a design patent; or (5) a patent under reexamination. See 37 CFR 1.114(e).

A3. When may an applicant file a request for continued examination (RCE) under 37 CFR 1.114? (Updated on 8/01/02)

An applicant may obtain continued examination of an application by filing a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of: (1) the date a patent is granted (but after payment of the issue fee only if a petition under 37 CFR 1.313 is granted); (2) abandonment of the application; or (3) the date applicant seeks court review of a decision by the Board of Patent Appeals and Interferences (unless the court action is terminated). See 37 CFR 1.114(a). An applicant cannot request continued examination of an application until after the prosecution in the application is closed. See 37 CFR 1.114(a).

Note: 37 CFR 1.114 in the Final Rule requires that prosecution in an application be closed (i.e, the application is under appeal, or the last Office action is a final action, a notice of allowance, or an action that otherwise closes prosecution in the application such as an Office action under Ex parte Quayle, 1935 Comm'r Dec. 11 (1935)) before an applicant can request continued examination of the application. Thus, a RCE would not be acceptable if the last Office action was a non-final rejection.

A4. An applicant filed a RCE within 3 months from the mailing of a non-final Office action (i.e., the prosecution in the application is not closed). With the RCE, the applicant submitted an amendment responsive to the Office action in compliance with 37 CFR 1.111 and the proper fee. (a) Is the RCE proper? (b) If the RCE is improper, will the amendment be entered and considered by the examiner to avoid abandonment of the application?

(a) The answer would depend on the filing date of the RCE.

If the RCE was filed before August 16, 2000, then the RCE would be proper because under the RCE Interim Rule, a RCE may be filed before the prosecution in an application is closed. See Changes to Application Examination and Provisional Application Practice, Interim Rule, 65 FR 14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000).

If the RCE, however, was filed on or after August 16, 2000, then the RCE would be improper because under the RCE Final Rule, a RCE may not be filed before the prosecution in an application is closed. See 37 CFR 1.114(a) and Request for Continued Examination Practice and Changes to Provisional Application Practice; Final Rule, 65 FR 50092 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000).

For the purpose of filing a RCE, the prosecution in an application is closed when the application is under appeal, or the last Office action is a final action, a notice of allowance or a Quayle action.

(b) Even though the RCE is improper (because it was filed on or after August 16, 2000 and before the prosecution is closed), the amendment submitted with the RCE would still be entered and considered by the examiner since it was timely filed and responsive to the non-final Office action in compliance with 37 CFR 1.111.

A5. What is/is not a submission under 37 CFR 1.114?

A submission as used in 37 CFR 1.114 includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. See 37 CFR 1.114(c). The definition for a “submission” in 37 CFR 1.114 is the same as the definition in 37 CFR 1.129(a). If reply to an Office action under 35 U.S.C. § 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c). Thus, an applicant may file a submission under 37 CFR 1.114 containing only an information disclosure statement (37 CFR 1.97 and 1.98) in an application subject to a notice of allowance under 35 U.S.C. § 151. An appeal brief or a reply brief (or related papers) will not be considered a submission under 37 CFR 1.114. See 37 CFR 1.114(d). The submission, however, may consist of the arguments in a previously filed appeal brief or reply brief, or may simply consist of a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief. In addition, a previously filed amendment after final may satisfy this submission requirement.

A6. What is the status of unentered after final amendments upon the filing of a RCE (and fee)?

Upon the filing of a RCE (and fee), the finality of the last Office action is withdrawn. Any previously filed unentered amendments, amendments filed with the RCE, and any amendments filed prior to the mailing of the next Office action (after the RCE) are to be entered. Any conflicting amendments should be clarified for entry by the applicant upon filing the RCE (and fee). Absent specific instructions for entry, all amendments filed as of the date the RCE is filed are entered in the order in which they were filed.

A7. What submission is required if applicant has submitted arguments after final which were (1) entered by the examiner (2) not found persuasive by the examiner in the prior prosecution and (3) an advisory action to that effect was mailed?

Prior to submitting the request for continued examination (and fee), the final rejection continues as modified by the advisory action. The request for continued examination (and fee) may be accompanied by new arguments or amendments. The request for continued examination, however, need not be accompanied by new arguments or amendments. The fact that the previously submitted arguments were not found persuasive does not preclude them as a submission under 37 CFR 1.114, provided that such arguments are responsive within the meaning of 37 CFR 1.111 to the Office action. Consideration of whether any submission is responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action is done without factoring in the "final" status of such outstanding Office action. Thus, a reply which might not be acceptable as a reply under 37 CFR 1.113 when the application is under a final rejection may very well be acceptable as a reply under 37 CFR 1.111.

A8. How should a conditional RCE be treated?

If a submission is accompanied by a "conditional" RCE and payment of the RCE fee (37 CFR 1.17(e) (i.e., an authorization to charge the 37 CFR 1.17(e) fee to a deposit account in the event that the submission would not otherwise be entered), the Office will treat the "conditional" RCE and payment as if a RCE and payment of the fee set forth in 37 CFR 1.17(e) had been filed.

A9. How should new matter in an amendment entered pursuant to 37 CFR 1.114 be treated?

35 U.S.C. § 132(a) provides that "[n]o amendment shall introduce new matter into the disclosure of the invention." Any amendment entered pursuant to 37 CFR 1.114 that is determined to contain new matter should be treated in the same manner that a reply under 37 CFR 1.111 determined to contain new matter is currently treated. See MPEP 706.03(o). In those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure in 37 CFR 1.114 is not available, and the applicant must file a continuation-in-part application under 37 CFR 1.53(b) containing such new matter. In addition, as 35 U.S.C. § 132(b) and 37 CFR 1.114 provide continued examination of an application (and not examination of a continuing application), the applicant cannot file a RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions) (see 37 CFR 1.145).

A10. Can the next Office action after the filing of a request for continued examination under 37 CFR 1.114 be made final?

The action immediately subsequent to the filing of a RCE with a submission and fee under 37 CFR 1.114 may be made final only if the conditions set forth in MPEP 706.07(b) for making a first action final in a continuing application are met.

A11. What if a request for continued examination under 37 CFR 1.114 is filed in an application under final rejection?

If an applicant timely files a RCE with the fee set forth in 37 CFR 1.17(e) and a submission, the Office will withdraw the finality of any Office action to which a reply is outstanding and the submission will be entered and considered. See 37 CFR 1.114(d). If the application is under final rejection, a submission meeting the reply requirements of 37 CFR 1.111 must be timely received to continue prosecution of an application. In other words, the mere request for, and payment of the fee for, continued examination will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application.

A12. What if a RCE is filed with a submission and the required fee after final rejection but the submission does not meet the reply requirements of 37 CFR 1.111?

If reply to an Office action is outstanding and the submission is not fully responsive to the prior Office action, then it must be a bona fide attempt to provide a complete reply to the prior Office action in order for the RCE to toll the period for reply. If the submission is a bona fide attempt to provide a complete reply, applicant should be informed that the submission is not fully responsive to the prior Office action, along with the reasons why, and given a new shortened statutory period of one month or thirty days (whichever is longer) to complete the reply. See 37 CFR 1.135(c). If the submission is not a bona fide attempt to provide a complete reply, the RCE will not toll the period for reply and the application will be abandoned after the expiration of the statutory period for reply.

A13. What if a request for continued examination under 37 CFR 1.114 is filed in an allowed application?

The phrase “withdraw the finality of any Office action” in 37 CFR 1.114(d) includes the withdrawal of the finality of a final rejection, as well as the closing of prosecution by an Office action under Ex parte Quayle, 1935 Comm’r Dec. 11 (1935), or notice of allowance under 35 U.S.C. § 151 (or notice of allowability). Therefore, if an applicant files a RCE with the fee set forth in 37 CFR 1.17(e) and a submission in an application which has been allowed, prosecution will be reopened. If the issue fee has been paid, however, payment of the fee for a RCE and a submission without a petition under 37 CFR 1.313 to withdraw the application from issue will not avoid issuance of the application as a patent.

A14. If a request for continued examination under 37 CFR 1.114 is filed in an allowed application after the issue fee has been paid and a petition under 37 CFR 1.313 is also filed and granted, does the applicant have to pay the issue fee again if the application is thereafter allowed? (Updated on 2/27/02)

No. If the issue fee has been paid and prosecution is reopened, the applicant may not obtain a refund of the issue fee. If, however, the application is subsequently allowed, applicant may request that the previously submitted issue fee be applied toward payment of the issue fee required by the new notice of allowance. Such request should be sent as a reply to the new notice of allowance.

A15. What if a request for continued examination under 37 CFR 1.114 is filed in an application after the filing of Notice of Appeal to the Board of Patent Appeals and Interferences but prior to a decision on the appeal?

If an applicant files a request for continued examination under 37 CFR 1.114 after the filing of a Notice of Appeal to the Board of Patent Appeals and Interferences, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. See 37 CFR 1.114(d). Thus, the filing of a request for continued examination under § 1.114 in an application containing an appeal awaiting a decision on the appeal will be treated as a withdrawal of the appeal by the applicant, regardless of whether the request for continued examination under 37 CFR 1.114 includes the appropriate fee (37 CFR 1.17(e)) or a submission (37 CFR 1.114(c)).

If a RCE is filed in an application after appeal to the Board of Patent Appeals and Interferences but the request does not include the fee required by 37 CFR 1.17(e) or the submission required by 37 CFR 1.114, or both, the examiner should withdraw the appeal pursuant to 37 CFR 1.114. The proceedings as to the rejected claims are considered terminated. Therefore, if no claim is allowed, the application is abandoned. See MPEP 1215.01. If there is at least one allowed claim, the application should be passed to issue on the allowed claim(s). If there is at least one allowed claim but formal matters are outstanding, applicant should be given a shortened statutory period of one month or thirty days (whichever is longer) in which to correct the formal matters.

A16. What if a request for continued examination under 37 CFR 1.114 is filed in an application after a decision by the Board of Patent Appeals and Interferences but before further appeal or civil action?

The filing of a request for continued examination (accompanied by the fee and a submission) after a decision by the Board of Patent Appeals and Interferences, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit (Federal Circuit) or the commencement of a civil action, will also result in the finality of the rejection or action being withdrawn and the submission being considered. In addition to the res judicata effect of a Board of Patent Appeals and Interferences decision in an application (see MPEP 706.03(w)), a Board of Patent Appeals and Interferences decision in an application is the "law of the case," and is thus controlling in that application and any subsequent, related application. See MPEP 1214.01 (where a new ground of rejection is entered by the Board of Patent Appeals and Interferences pursuant to 37 CFR 1.196(b), argument without either amendment of the claims so rejected or the submission of a showing of facts can only result in a final rejection of the claims, since the examiner is without authority to allow the claims unless amended or unless the rejection is overcome by a showing of facts not before the Board of Patent Appeals and Interferences). As such, a submission containing arguments without either amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection.

A17. What if a request for continued examination under 37 CFR 1.114 is filed in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action?

The procedure set forth in 37 CFR 1.114 is not available in an application after the filing of a Notice of Appeal to the Federal Circuit or the commencement of a civil action, unless the appeal or civil action is terminated and the application is still pending. If a RCE is filed in an application that has undergone court review, the application should be brought to the attention of the SPE or SPRE to determine whether the RCE is proper.

A18. Can a CPA still be filed after May 29, 2000? (Updated on 2/27/02)

37 CFR 1.53(d)(1)(i) has been amended to provide that continued prosecution application (CPA) practice under 37 CFR 1.53(d) does not apply to applications (other than design) if the prior application has a filing date on or after May 29, 2000. Thus, an application (except for a design application) must have an actual filing date before May 29, 2000 for the applicant to be able to file a CPA of that application. While the Office uses the filing date (and application number) of the prior application of a CPA for identification purposes, the filing date of a CPA under 37 CFR 1.53(d) is the date the request for a CPA is filed. See 37 CFR 1.53(d)(2). Thus, if a CPA of an application (other than for a design patent) is filed on or after May 29, 2000, 37 CFR 1.53(d)(1)(i) does not permit the filing of a further CPA, regardless of the filing date of the prior application as to the first CPA (i.e., the filing date used for identification purposes for the CPA).

Please see CE1 for information on publication of continued prosecution applications.

A19. What if an applicant files a request for a CPA of a utility or plant application that was filed on or after May 29, 2000? (Updated 7/30/01; updated 2/27/02)

In the event that an applicant files a request for a CPA of a utility or plant application that was filed on or after May 29, 2000 (to which CPA practice no longer applies), the Office will automatically treat the improper CPA as a request for continued examination (RCE) of the prior application (identified in the request for CPA) if all the requirements under 37 CFR 1.114 are met (e.g., the request was filed with a submission and fee, and the prosecution is closed). If the requirements are not met, a Notice of Improper RCE will be sent to applicant and the time period for reply continues to run from the mailing of the last Office action or notice. If the time period expires, the application will be abandoned.

A20. How does the RCE procedure under 37 CFR 1.114 differ from the transitional procedure set forth in 37 CFR 1.129(a) and CPA procedure set forth in 37 CFR 1.53(d)?

The request for continued examination (RCE) procedure in 37 CFR 1.114 should not be confused with the transitional procedure for the further limited examination of patent applications set forth in 37 CFR 1.129(a) or the continued prosecution application (CPA) procedure set forth in 37 CFR 1.53(d). This chart provides a comparison of the three different procedures.

http://www.uspto.gov/web/offices/dcom/olia/aipa/RCECPA.pdf

A21. has been deleted as being obsolete (8/01/02).

A22. If a RCE is filed after the mailing of a Notice of Allowance but before payment of the issue fee, is a petition under 37 CFR 1.313 to withdraw the application from issue required?

No. If a RCE (with the fee and a submission) is filed in an allowed application prior to payment of the issue fee, a petition to withdraw the application from issue is not required. If the issue fee has been paid, however, filing of a RCE (with the fee and a submission) without a petition to withdraw the application from issue will not avoid issuance of the application as a patent. See 37 CFR 1.114(a).

A23. Has been deleted because the information is repeated in A22.

A24. Does amended 35 U.S.C. 119(e) enable a nonprovisional application to claim priority based on a corresponding provisional application when the nonprovisional is filed more than 12 months after the filing of the provisional? (Updated on 2/27/02)

No. 37 U.S.C. 119(e)(1) still requires that a nonprovisional application be filed within twelve months of the filing date of the provisional application for the nonprovisional application to claim the benefit of the filing date of the provisional application. Under 35 U.S.C. 21(b), if this twelve-month period expires on a non-business day, it is extended to expire on the next business day.

For more information on provisional and nonprovisional applications, see http://www.uspto.gov/web/patents/types.htm.

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B. Patent Term Adjustment

B1. In view of the Patent Term Guarantee, does the United States Patent and Trademark Office plan to print an explicit indication of the expiration date on the face of a patent so that the expiration date can be ascertained without having to add the patent term extension to the original patent term?

The United States Patent and Trademark Office does not print the expiration date on issued patents because the actual date a patent will expire is dependent upon a number of future events. The actual date any particular patent will expire is, for example, dependent upon whether: (1) all maintenance fees are timely paid; (2) the patent is disclaimed, either by a statutory disclaimer of all claims or a terminal disclaimer; (3) all of the claims of the patent are canceled during a reexamination proceeding; or (4) an extension under 35 U.S.C. 156 is granted. Since less than forty percent of patentees pay all three maintenance fees, an expiration date based upon a calculation of date that is twenty years from the earliest filing date under 35 U.S.C. 111(a), 120, 121, 363, or 365(c) plus any calculated extension under 35 U.S.C. 154(b) would be incorrect and misleading over sixty percent of the time. However, the front page of the patent will indicate the number of days of term adjustment to which the patent is entitled.

B2. May an applicant obtain patent term adjustment even if prosecution is less than 3 years? (Updated 7/9/01)

Yes, assuming the application is eligible, patent term adjustment is available under either 35 USC 154(b)(1)(A) (administrative delays) or (C) (interferences, secrecy orders and successful appeals) regardless of how long the application was pending in the Office. See 37 CFR 1.702(a), (c), (d), and (e).

Example: An application is filed 6/1/00. A notice of allowance is mailed 9/1/01. The issue fee is paid and all formal requirements are satisfied on 12/1/01. The patent is not issued until 5/1/02. As the patent was not issued in four months following the payment of the issue fee, the period of delay from 4/2/02 to 5/1/02 would give rise to patent term adjustment pursuant 35 USC 154(b)(1)(A)(iv) and 37 CFR 1.702(a)(4) and 1.703(a)(6).

B3. Is an application for patent term adjustment under 37 CFR 1.705(c) required to include the fee set forth in 1.18(f) and the fee set forth in 1.18(e) or only the fee set forth in 1.18(f)?

Both fees. Even an application for term adjustment that is only requesting reinstatement of part of a period of adjustment by showing, in spite of all due care, that the applicant was unable to respond to any rejection, objection, argument or any other request made by the Office within a three-month period starting the date of mailing of the Office action or requirement, is required to pay the fee for an application for term adjustment set forth in 1.18(e) as well as the fee for a due care showing set forth in 1.18(f). In other words, an application under 37 CFR 1.705(c) is also required to comply with 37 CFR 1.705(b).

B4. When must an application be filed in order for the National Stage of an International Application to be eligible for Patent Term Adjustment (PTA) ?

The international application must have an international filing date of May 29, 2000 or later. The date on which the international application either complies with 35 USC 371(c) or enters the National Stage is not relevant for determining eligibility for PTA. See section 4405(a) of the AIPA, 35 USC § 363, and 37 CFR § 1.702(f).

B5. If an International Application is filed before May 29, 2000 and is pending on or after May 29, 2000, may a continuing application filed under 35 USC 111(a) be filed on or after May 29, 2000, to seek the benefit of Patent Term Adjustment (PTA)?

Yes, the filing date of the continuing application controls, thus, if the continuing application is filed on or after May 29, 2000, the continuing application is eligible for PTA. See section 4405(a) of the AIPA, 35 USC §§ 111(a) and 120, and 37 CFR § 1.702(f).

B6. 37 CFR 1.704(c)(10) provides that submission of an amendment under 37 CFR 1.312 or other paper after a notice of allowance has been mailed is a circumstance that constitutes a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application. Are formal drawings an “other paper” within the meaning of 37 CFR 1.704(c)(10), such that the submission of formal drawings after a notice of allowance is mailed will result in reduction of any patent term adjustment? What if the drawings are required by the notice of allowance?

Yes (regardless of whether formal drawings are required by the notice of allowance). 37 CFR 1.85 no longer permits applicants to request that a requirement for correction of drawings be held in abeyance until a notice of allowance is mailed. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final rule, 65 Fed. Reg. 57023, 57032, 57055 (Sept. 20, 2000). Applicants must file any formal drawings prior to the mailing of a notice of allowance to avoid a reduction of any patent term adjustment.

B7. An application for patent term adjustment cannot be filed before a Notice of Allowance has been mailed. If a contents error is noted in the Office Patent Application Location and Monitoring (PALM) records when they are viewed using the Patent Application Information Retrieval system (PAIR), who should I contact to have these records corrected? (Posted on 5/10/01; updated on 7/9/01)

If the error is a contents entry other than the filing date of an application, including a Continued Prosecution Application (CPA), contact the Customer Service Representative (Representative) for the Technology Center (TC) where your application is assigned. If you are alleging that the date shown in PAIR is an incorrect date, then the Representative may need documentary evidence (e.g., an Express Mail label or a post card receipt) showing that the paper was received on a certain date. Note that the certificate of mailing date (which may be relied upon for timely filing purposes) is not retained in the USPTO PALM records, and that the date a paper is received is the date that the USPTO actually received the papers, unless the paper was filed using Express Mail under 37 CFR 1.10. The Representative will obtain the application file wrapper and determine whether there is an error in the USPTO’s records. If there is a date error, the records will be corrected.

If the error is in the filing date of an application, including a CPA, a filing date petition is required. Contact the Office of Petitions by telephone at (703)305-9285 or by fax at (703)308-6916 for further information. If a telephone call is made to correct an Office PALM record, other than correcting such an error, no entries are made in PALM (the computer system used to calculate the Patent Term Adjustment), and there would be no reduction to any patent term adjustment. Note a reduction may apply if applicant repeatedly calls the customer service center concerning an application making frivolous requests, and the processing of the application is delayed. If applicant submits a letter with documentary evidence requesting that the Office PALM records be corrected, this letter is matched with the application, and the letter should be entered in PALM. Such a letter would generally not cause a reduction in PTA, however, if applicant were to repeatedly ask for the date to be changed to the certificate of mailing date, or any other improper date, or file such a letter after allowance, the PTA would be reduced under 37 CFR 1.704(a). There is no fee if the above procedure is followed. The above procedure (of contacting the Customer Service Representative) is not permitted after a notice of allowance has been mailed because the application is forwarded to the Office of Patent Publication after allowance, and thus is not readily available to the TCs. In addition, after a notice of allowance has been mailed, an application for patent term adjustment (and the fee) must be filed to have Office records corrected if the change results in a need to recalculate the patent term adjustment. See 37 CFR 1.705(b).

B8. Please indicate when the thirty-day period specified in 37 CFR 1.704(d) begins to run in the following circumstances, and explain the basis of the Office’s conclusions (note: 37 CFR 1.704(d) concerns the filing of an IDS in relation to discovery of reference during foreign prosecution of an invention that is also the basis of a U.S. application): (Posted on 9/17/01; revised on 9/24/01)

Example A:
An applicant based in Chicago, Illinois, directs US counsel to prepare, file and prosecute an application in the United States Patent and Trademark Office. The US counsel subsequently sends the application to foreign counsel for filing and prosecution in foreign jurisdictions. The US counsel directs foreign counsel to provide copies of all communications from the foreign office (by fax or overnight mail) within seven days of receipt thereof, and expressly reserves all decision-making authority as to prosecution of the US and foreign applications.

On January 5, 2002, a foreign counsel in Germany receives a communication from the European Patent Office that includes a list of citations of patents. On January 8, the foreign counsel, pursuant to the standing instructions of US counsel, sends by overnight mail, a copy of the communication from the EPO. The document is received by US counsel on January 12, 2002. On January 30, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 11, 2002.

Example B:
An applicant based in Paris, France, directs French counsel to prepare, file and prosecute an application in the European Patent Office. The EPO application is then sent to US counsel by French counsel to be reviewed, edited and prepared for filing in the United States Patent and Trademark Office. The US counsel works with the French counsel to review the edited application, and then files the US application. The review and editing of the US application also leads the French counsel to amend its EPO application.

On January 5, 2002, the French counsel receives a search report from the European Patent Office that includes a list of six patents. On January 20, 2002, the US counsel receives from French counsel (by overnight mail) a copy of the communication from the EPO and suggests that the US counsel review the search report and “take appropriate action.” On January 25, 2002, the French counsel provides a copy of the search report to the applicant. On January 30, 2002, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 14, 2002.

Example C:
An applicant based in Chicago, Illinois, hires US counsel to prepare an application suitable for filing in the United States and the European Patent Office. The US counsel engages a German attorney to assist in the review and editing of the application to take account of issues relevant to EPO practice. The US counsel then reviews the edited application, approves the changes, and files it in the United States. The US counsel then directs the German attorney to file the application in the EPO. During prosecution of the US case, the US counsel receives an office action citing three patents.

On December 1, 2001, the US counsel sends the three patents to the German attorney for review and appropriate action. On January 5, 2002, the German attorney receives a search report from the EPO that cites the three previously cited patents, plus a fourth patent, designating all as “X” references. On January 15, the German attorney reviews the fourth patent and compares it to the three patents cited in the US prosecution. The German attorney concludes that the fourth patent is duplicative of one of the three patents, and takes no further action.

On March 1, 2002, during a routine status inquiry, the US counsel is informed of the citation of the fourth patent by the EPO and the decision of the German attorney that the information in the newly cited patent was duplicative of the three patents previously cited by the USPTO. The US counsel also obtains copies of the newly cited patent on this date. On March 5, 2002, the US counsel files an IDS containing the newly cited patent.

Introduction

37 CFR 1.704(d) provides that a paper containing only an information disclosure statement in compliance with 37 CFR 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10) if it is accompanied by a statement that each item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart application and that this communication was not received by any individual designated in 37 CFR 1.56(c) more than thirty days prior to the filing of the information disclosure statement.

The determination of when the thirty day period begins to run is dependent on the role of each entity involved in the prosecution of the US and foreign applications, and the role that each plays (if any) vis-à-vis the US application. The inventors, the assignee and the US patent counsel are all individuals designated in 37 CFR 1.56(c). The issue is whether the foreign patent counsel is also an individual designated in 37 CFR 1.56(c).

37 CFR 1.56(c) provides that individuals associated with the filing or prosecution of a patent application within the meaning of 37 CFR 1.56 are:

Based on these elements of 37 CFR 1.56(c), the following would be the conclusions of the Office in the three examples cited above.

Answer to Example A:

The thirty-day period would be calculated from January 12, 2002. As such, the IDS filed on February 11th would be filed within the thirty-day window in 37 CFR 1.704(d), and thus would not result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

In this example, the foreign counsel has no substantive role in the prosecution of the US application. The explicitly defined role of the foreign counsel relative to the US counsel in combination with the practice in the described fact pattern removes any potential doubt as to the role of the foreign counsel.

Answer to Example B:

The thirty-day period would be calculated from January 5, 2002. As such, the submission of the IDS would not be received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10).

In this example, the PTO would consider the French counsel to have been a party within the meaning of 37 CFR 1.56(c). The French counsel, based on the above facts, played a material role in the preparation and prosecution of the US application (e.g., counsel drafted the original application, worked with US counsel to amend the application and subsequently amended the EPO application based on the work product produced with US counsel). In addition to the French counsel, the applicant would in any case be a party within the meaning of 37 CFR 1.56(c).

Answer to Example C:

The thirty-day period would be calculated from January 5, 2002. As such, the submission of the IDS would be determined to have not been received, received within the thirty-day window in 37 CFR 1.704(d), and thus could result in a reduction of any patent term pursuant to 37 CFR 1.704(c)(6), (c)(8), (c)(9), or (c)(10). .

In this example, the PTO would consider the participation of the German counsel in the prosecution and decision-making as to the relevance of the newly cited art vis-à-vis the previously cited three patents to be a material participation in the US prosecution. As such, the German counsel would be considered by the PTO to be a party covered by 37 CFR 1.56(c), and as such, would evaluate compliance with 37 CFR 1.704(d) from the date that the foreign counsel first learned of the fourth patent (i.e., the newly cited reference).

B9. I have some questions regarding patent term adjustment (PTA). Who can help me? (Posted on 2/27/02; updated 4/1/02)

Inquiries related to PTA may be directed to the Office of Patent Legal Administration at (703) 305-1383.

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C. Eighteen-Month Publication

For helpful hints, please see the following OG notices:

Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83
(August 21, 2001) (available at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm).

Pre-Grant Publication Helpful Hint: File Continuation or Divisional Application with a New Specification and Copy of Oath or Declaration from Prior Application, 1251 OG 54
(October 9, 2001) (available at http://www.uspto.gov/web/offices/com/sol/og/2001/week41/pathint.htm).

CA. Access to Application File
CB. Amended Applications, Publication
CC. Application Data Sheet
CD. Assignment of Application That Has Been Published, see also PAIR
CE. Continuing Applications (including CPAs)
CF. Correction of Bibliographic Data
CG. Correction of Drawings
CH. Corrected or Revised Patent Application Publication
CI. Correspondence Address Printed on Publication
CJ. Display of Application on USPTO Homepage (no current Q & A)
CK. Early Publication
CL. Electronic Filing System
CM. Express Abandonments
CN. Filing Receipts, see also Correction of Bibliographic Data
CO. General Information on Publication on Patent Applications
CP. Information Disclosure Statements and Third Party Prior Art Submissions
CQ. Nonpublication Request
CR. Notice of Publication
CS. Notice of Allowance and Fee(s) Due (Publication Fee Due)
CT. Patent Application Information Retrieval (PAIR)
CU. Patent Application Publication
CV. Patent Rules
CW. Pre-Grant Publication (AIPA) Forms
CX. Priority Claims
CY. Projected Publication Date, see Filing Receipt
CZ. Provisional Applications
CAA. Provisional Rights
CAB. Questions Regarding the Publication of Patent Applications
CAC. Redacted Publication
CAD. Rejections, 35 USC 135(c)
CAE. Request for Continued Examination
CAF. Rescinding Non-Publication Requests
CAG. Royalty- see Provisional Rights
CAH. Voluntary Publication
CAI. What Applications are Published?
CAJ. When is the Publication Fee Required?
CAK. Where are Published Applications?

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CA. Access to Application File

CA1. What is the easiest way to request a copy of the file wrapper of a published application or a paper within the file wrapper? (Posted on 6/13/01; renumbered from C12; updated 5/5/03)

A copy of a file wrapper or a particular paper within the file wrapper of an application published under 35 U.S.C. 122(b) may be requested electronically over the Internet at http://ebiz1.uspto.gov/oems25p/index.html or directly by contacting the Office of Public Records via telephone at the customer service numbers below, via facsimile at (703) 305-8579, or via mail addressed to the United States Patent and Trademark Office, Office of Public Records, P.O. Box 1450 Alexandria, VA 22313-1450. The fee for a copy of a file wrapper ($200.00 for the first 400 or fewer pages) is set forth in 37 CFR 1.19(b)(2), the fee for a particular paper ($25.00) is set forth in 37 CFR 1.19(b)(4). No physical access to the file wrapper of a pending published application is permitted. Questions regarding this service should be directed to the Office of Public Records Customer Service Line at (703) 308-9726 or (800) 972-6382. Customer Service staff are available between 8:30 a.m. and 8:00 p.m. US Eastern Standard Time. The After Hours Technical Support Line is: (800) 786-9199. Help using the online ordering system is also available online at https://www3.uspto.gov/vision- service/ShoppingCart_P/
ShowHelp?topic=DocumentTypes#FileWrapperContent.

CB. Amended Applications, Publication

CB1. When submitting an application though EFS for purposes of having the amended version published, how should the claims be numbered if some of the initial claims have been canceled and new claims have been added? (Posted on 10/4/01)

The EFS version of the amended application should be filed with claims that are pending in the application (i.e., excluding deleted claims and including new claims). PASAT will automatically renumber the claims in consecutive ascending order.

For more information on preliminary amendments, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm).

CC. Application Data Sheet

CC1. If the domestic priority/continuity information has been included in an Application Data Sheet (ADS) in compliance with 37 CFR 1.76, will such information be printed on the front of the application publication (and the patent) as well as within the text of the specification? (Posted on 10/4/01)

If the domestic priority/continuity information is included in an application data sheet, such information is not required to be included in the first sentence of the specification following the title. The domestic priority/continuity information will be printed on the front page, but not in the specification of the application publication and the patent, unless such information was also provided by the applicant in the first sentence of the specification following the title.

CD. Assignment of Application That has Been Published, see also PAIR

CD1. How do I find out whether a patent application publication has been assigned? (Posted on 6/27/01; renumbered from C23; updated on 2/27/02 and 8/01/02)

If applicant requested the assignment information to be printed on the patent application publication, then the Office prints the assignee on the patent application publication. If no assignment information is included, then no assignee field will appear. There is no legal effect to this information when it is included or not included on a patent application publication (or patent). It is included for informational purposes only. Assignments are recorded in a special database upon payment of the statutory fee, and meeting other regulatory requirements. Assignment information is publicly available for patent application publications pursuant to 37 CFR 1.12(a)(1) from the Patent Assignment Search Room, which can be reached by telephone at (703) 308-2768.

CD2. Will assignee data be printed on a patent application publication? (Posted on 10/4/01)

If the applicant would like the assignee data to be published, the information must be provided on the application transmittal letter or the application data sheet (ADS) that was filed with the application. The applicant may also submit the information via PAIR (Bib-data review prior to publication). If the assignee data is recorded with the Assignment branch only, the information will not be published.

CE. Continuing Applications (including CPAs)

CE1. If I file a Continued Prosecution Application (CPA), will the application be subject to publication? (Posted on 10/4/01; updated on 2/27/02)

If the CPA is filed on or after 11/29/00 in an application that is eligible for the CPA practice, the Office will publish the content of the original filed prior application promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code. For example, if the prior application has no benefit claim, the application will be published after 18 months from the filing date of the prior application.

If the CPA is filed before 11/29/00 or filed in an application that is not eligible for the CPA practice, the application will not be published.

See questions A18, A19, and A20 for restrictions on the CPA practice, treatment of improper CPA, and the differences between a request for continued examination (RCE) and a CPA.

CF. Correction of Bibliographic Data

CF1. How can I ensure that the bibliographic information for a patent application is printed correctly? (Posted on 6/27/01; updated 10/01; renumbered from C13)

Use of an Application Data Sheet (ADS) (see http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html and 37 CFR 1.76) assists the Office in identifying the appropriate bibliographic information for a patent application for entry into the Office's computer systems. Since the information reflected on a filing receipt (e.g., title) is used for publishing the patent application, use of an ADS can help to ensure that the patent application is printed correctly. In addition, if the bibliographic information for a patent application (e.g., inventor names and residences, title, assignee, and other information shown on the filing receipt) is incorrect, applicants may submit corrections to the bibliographic information through the Patent Application Information Retrieval (PAIR) system (see the answers to the questions CT1 - CT7 (originally C14 - C19) or request a corrected filing receipt. If the information is submitted more than fourteen weeks before the projected publication date, there should be sufficient time for the information to be corrected before the information is forwarded to the printer (about nine weeks before the projected publication date).

For more information on PAIR, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm).

CG. Correction of Drawings

CG1. Are the time periods to submit corrected drawings in response to the Notice to File Missing Parts and the Notice to File Corrected Application Papers extendable? (Renumbered from C11)

Yes. The time period to file corrected drawings is extendable up to 5 months under 37 CFR 1.136(a) and in an exceptional situation, further extendable under 37 CFR 1.136(b). These Notices have been corrected to make it clear that the time period is extendable.

CH. Corrected or Revised Patent Application Publication

CH1. How do I request a republication of an application to correct or revise a patent application publication? (Posted on 10/4/01)

Any request for the republication of an application previously published must be filed using the Electronic Filing System (EFS). If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed.

To correct or revise applicant or non-material errors, the applicant must pay publication and processing fees as set forth in 37 CFR § 1.18(d) (currently $300) and 1.17(i) (currently $130), respectively. If there is no payment of fees, the USPTO will send the applicant a letter requiring the fees. The republication of the application will be delayed.

There are no fees due for material errors, which are apparent from the USPTO records. These requests for corrected or revised publications must be filed within 2 months from the publication date of the patent application publication. This period is not extendable.

For more information on EFS, go to http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

CH2. What is the deadline for requesting a republication of an application to correct or revise a patent application publication? (Posted on 10/4/01)

The time period for requesting a republication to correct a material error made by the USPTO without a fee is 2 months from the publication date. If the applicant is willing to provide an EFS copy and pay the $430 republication fee, there is no time limit.

CH3. Will the entire application including the corrections or only the corrections be printed in a corrected or revised publication? (Posted on 10/4/01)

The entire application including the corrections will be published.

CI. Correspondence Address Printed on Publication

CI1. Patent application publications always appear to have a correspondence address printed on them that is the same as the correspondence address for the application. Can no address or a different address be printed? (Posted on 6/27/01; renumbered from C27)

No.

CJ. Display of Application on USPTO Homepage

CJ1. Has been deleted as being obsolete (Posted on 6/27/01; renumbered from C36; deleted 8/01/02)

CK. Early Publication

CK1. Is there a form for an early publication request? (Posted on 6/27/01; renumbered from C28)

No, in an application filed on or after 11/29/00, applicant may request early publication of an application with any conspicuous letter requesting early publication. The request must include the publication fee. See 37 CFR 1.18(d). Note that if early publication is requested, and the publication fee paid, applicant will not be required to pay the publication fee at allowance.

CK2. How do I request an early publication after I have submitted my application? (Posted on 10/4/01; updated on 2/27/02)

Any request for an early publication must be accompanied by the publication fee set forth in 37 CFR 1.18(d) (currently $300). The applicant must submit a copy of the application in compliance with the Electronic Filing System (EFS) requirements in 37 CFR 1.215(c) or the USPTO will publish the application as provided in 37 CFR 1.215(a). If the EFS requirements are not met, the application will be published, in general, as originally filed. No consideration will be given to requests for publication on a certain date. Such requests will be treated as a request for publication as soon as possible.

CK3. If I request for an early publication, how soon will the application be published? (Posted on 10/4/01)

The publication cycle takes approximately 14 - 16 weeks and does not begin until the application is complete and ready for publication (e.g., an executed declaration has been filed and the filing fee has been paid).

CL. Electronic Filing System

CL1. What is the Electronic Filing System? (Posted on 10/4/01)

EFS is the electronic system for submitting patent applications, computer readable format (CRF) biosequence listings, and pre-grant publication submissions to the USPTO via the Internet. It includes:

• authoring tools to help the applicant prepare a patent specification in XML format;
• a software package called ePAVE (electronic packaging and validation engine) to assemble the various parts of the application and transmit the application to USPTO over the Internet; and
• a digital certificate to secure the transmission of the application to the USPTO.

For more information on EFS, go to http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

CL2. What type of submissions can be filed with EFS? (Posted on 10/4/01; updated on 8/01/02)

EFS can be used to submit:

• New utility patent applications,
• Biosequence listings for applications previously filed in paper, and
• Pre-grant publication submissions for previously filed applications, where the applicant wants to publish:
  (1) an amended or redacted version of the application rather than the application as originally filed,
  (2) a republication to correct or revise a publication, or
  (3) the application voluntarily because the application filed before 11/29/00 is not subject to publication.
• Information Disclosure Statements (IDSs); and
• Provisional applications.

At this time EFS does not accept:

• Design applications,
• New plant applications,
• Reissue applications,
• International Patent Cooperation Treaty (PCT) applications, or
• Reexamination requests.

For more information on EFS, go to http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

CL3. Where does an applicant send the "paper-copy" of an EFS redacted publication request? (Posted on 10/4/01; updated 5/5/03)

Mail Stop PGPUB, Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450.

CL4. If an applicant wants to publish an amended version of the application when he or she files a CPA, when must the applicant file the EFS version of the amended application for the publication? (Posted on 10/4/01)

The applicant will have one month from the mailing date of the new filing receipt to file the amended application via EFS. See Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 OG 97 (December 26, 2000).

CM. Express Abandonment

CM1. How do I file an express abandonment to avoid publication? (Posted on 10/4/01; updated 5/5/03)

A petition to abandon an application to avoid publication under 37 CFR 1.138(c) and the fee (currently $130) set forth in 37 CFR 1.17(h) may be filed if there is sufficient time (i.e., more than 4 weeks) to permit the appropriate officials to recognize the abandonment and remove the application from the publication process, i.e., the petition must be received by the Office of Patent Publication no later than four weeks before the projected publication date. The petition will not be granted unless the petition and the fee are received more than four weeks prior to the projected date of publication (found on the filing receipt). The petition and the fee (or an authorization to charge the fee to a deposit account) should be mailed to Mail Stop PGPUB-ABD, Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450, or faxed to the Office of Patent Publication, PGPub Division, at (703) 305-8568.

CN. Filing Receipts, see also Correction of Bibliographic Data

CN1. I received a filing receipt in a Continued Prosecution Application (CPA), but the filing receipt has nothing specific to the CPA, except an indication of a projected publication date. Why doesn't the filing receipt indicate that it is for a CPA rather than the originally-filed application? (Posted on 6/27/01; renumbered from C20)

The Office began to mail filing receipts for CPAs beginning in February of 2001. The filing receipts that were first mailed did not explain that they were for the CPA and created considerable confusion. The Office has revised the receipt so that for CPAs, the filing receipt now states "Receipt is acknowledged for a CPA in this nonprovisional Patent Application…" and also has a field for the date the CPA was filed between the field for the date the foreign filing license was granted and the Projected Publication Date. Because the application is identified by the application number and filing date accorded when the application was originally filed, the application number and filing date in the header will continue to indicate a filing date earlier than the filing date of the CPA.

CN2. The filing receipts that I receive look different, sometimes they have assignee information and sometimes they do not. Should they look the same? (Posted on 6/27/01; renumbered from C21)

If applicants have provided assignment information on the transmittal letter or on an application data sheet, or submitted it through PAIR, a field labeled "Assignment for Published Patent Application" will appear after the list of the inventors. If no assignment information has been provided for purposes of printing the patent application publication, this field will not appear.

CN3 has been deleted because the problem stated in the Q&A has been corrected. (Updated on 2/27/02)

CN4. I received a filing receipt with a projected publication date, and I don't think that the application should be published, what should I do? (Posted on 6/27/01; renumbered from C31)

If you do not think that you should have received a projected publication date because you filed a request for continued examination (RCE) or because the filing date of the application is before November 29, 2000, contact the Technology Center where your application is assigned and ask for the Customer Service Representative. The Representative can have the problem corrected.

CO. General Information on Publication of Patent Applications

CO1. Is there any information on the United States Patent and Trademark Office Web site regarding automation plans related to Pre-Grant Publication of Applications? (Renumbered from C1)

Yes, please see the Pre-Grant Publication Global Concept of Operations document, posted on the AIPA web page, under the heading "Presentations."

For more information on publication of patent applications, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm).

CP. Information Disclosure Statements and Third Party Prior Art Submissions

CP1. Will references in a submission under 37 CFR § 1.99 be placed in the application file and forwarded to the examiner if the submission includes explanation or references that are highlighted? (Posted 9/6/00; Renumbered from C7)

Section 1.99 provides that a submission by a member of the public of patents or publications relevant to a pending published application will be entered in the application file if the submission complies with the requirements of § 1.99 and the application is still pending when the submission and application file are brought before the examiner. Section 1.99(d) provides that a submission under § 1.99 may not include any explanation of the references, or any other information. The Office will dispose of any explanation or information if included in a submission under § 1.99. To ensure that there is no protest, the Office will review submissions under § 1.99 to determine whether they are limited to patents and publications before the submission is placed in the file of the application and forwarded to the examiner. The submission under § 1.99 will not be placed in the file of the application, if the explanation of the references and any other information included in the submission are integrated in the references and cannot be extracted easily, or if the references are highlighted.

CP2. If a 1.99 third party submission contains a patent or printed publication that is material to the patentability of a claim, should the applicant disclose such reference to the Office in an IDS in compliance with 37 CFR 1.97 and 1.98? (Posted on 10/4/01)

Yes, since the entry of a third party submission does not mean that the information contained in the submission be considered by the examiner, an individual who has a duty to disclose under 37 CFR 1.56, including the applicant, should submit such information in an IDS in compliance with 37 CFR 1.97 and 1.98 to ensure that any material information is properly considered by the examiner.

CQ. Nonpublication Request

CQ1. Where can I find the form for the certification under Subtitle E of the American Inventors Protection Act of 1999 that no foreign filing is planned for the invention described in a new application? (Posted 10/4/01; Renumbered from CA1)

The new form PTO/SB/35 "Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)" is available at: http://www.uspto.gov/web/forms/sb0035.pdf

For more information on nonpublication request, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm).

CQ2. (A) Is there a mechanism by which the USPTO intends to assess whether or not any foreign filings have been made contrary to the certification provided by the applicant under 35 USC 22(b)(2)(B)(i), and whether or not the notice requirements of section 122(b)(2)(iii) have subsequently been met? (Updated 7/9/01; renumbered from CA2; updated 5/5/03)

The Office does not have any current plans to routinely monitor compliance with either the certification or notice requirements of 35 USC 122(b)(2). Applicants are advised that the Office's failure to note that an application has gone abandoned as a matter of law for failing to provide the proper notice has no effect on the abandoned status of the application (will not operate to prevent the abandonment of the application), regardless of any indication of allowability from the Office.

(B) Also, is there a mechanism by which the USPTO intends to provide notice to applicants that their patent applications have been "regarded as abandoned" for having failed to provide notice of foreign filings within 45 days thereof, as required by section 122(b)(2)(iii)?

The Office does not have any current plans to routinely provide notice to applicant that their patent applications have been "regarded as abandoned." Should the examiner become aware of the foreign filing, e.g., during the prior art search, the examiner does have the authority to formally hold the application abandoned.

CQ3. If I file a PCT application designating the U.S. and then before the International Bureau publishes the PCT application I abandon the application, may I submit a non-publication request under 37 CFR 1.213 with a filing of a U.S. application under 35 USC 111, that discloses the same subject matter as disclosed in the PCT application? (Renumbered from CA3)

No, the mere filing of the PCT application precludes the proper use of a non-publication request, since the invention disclosed in the US application was the subject of an application that was filed under an international agreement requiring publication at 18 months (the PCT). 35 USC 122(b)(2)(B)(i) states that "If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, . . ." The trigger in the statute is not the publication, but rather the trigger is the act of filing in a foreign country that requires publication, or under international agreement that requires publication. Thus 37 CFR 1.213(a)(3) is consistent with the statutory requirement. The statute simply does not allow for abandonment of the foreign application, or application under a multilateral international agreement, prior to foreign publication at 18-months in order to provide for an appropriate request for non-publication in the US application.

CQ4. I did not use the USPTO form, "Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)" (posted at http://www.uspto.gov/web/forms/sb0035.pdf), when I filed a patent application. Instead I put the request for non-publication in the body of the declaration for the patent application under 37 CFR 1.63. My application was assigned a publication date. How can I get the non-publication request treated and not have my application published? (Renumbered from CA4; Updated 10/01)

A request for non-publication will not be recognized unless it is conspicuous. See 37 CFR 1.213(a)(2). Providing text as one paragraph among numerous other paragraphs with no highlighting of the request for non-publication is not conspicuous, and thus the Office's assignment of a publication date was appropriate. To avoid publication you may expressly abandon the application, and file a new application under 37 CFR 1.53(b), claiming priority to the earlier-filed application, with a "Nonpublication Request under 35 U.S.C. 122(b)(2)(B)(i)" (posted at http://www.uspto.gov/web/forms/sb0035.pdf) or make the request and certification in a similarly conspicuous manner when filing the patent application. If your application has been assigned a publication date within the next one to six months, you should consider filing a petition for express abandonment under 37 CFR 1.138(c). If your application has been assigned a publication date within the next four weeks, then it is too late to avoid publication of the application. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final Rule, 65 Fed. Reg. 57024, 57034, Sep. 20, 2000, 1239 Off. Gaz. Pat. Office 63, 73 (October 10, 2000). Applicant would have a similar remedy in other situations where the request is not conspicuous, for example, where the request is in the specification of the application, on a fee transmittal sheet, or buried in the transmittal letter.

CQ5. I filed a nonpublication request with the application on filing, but the filing receipt shows a projected publication date. What should I do? (Posted on 6/27/01; renumbered from C34)

Contact the Customer Service Representative for the Technology Center where your application is assigned. They can have the application withdrawn from publication if your non-publication request is in the application file wrapper and is conspicuous. If they cannot find the nonpublication request, but you have a post card receipt showing that the nonpublication request was in fact filed, you should contact the Office of Patent Legal Administration at (703)308-6906.

CQ6. I filed a nonpublication request and a certification under 35 U.S.C. 122(b)(2)(B)(i) using the USPTO form PTO/SB/35 at the time of filing the U.S. application. At that time, I did not believe that publication was necessary because the invention disclosed in the application was already published in a previously filed corresponding PCT application. Upon further review, however, I now believe that publication of the U.S. application is appropriate because the PCT application is an application under a multilateral international agreement that requires eighteen-month publication. (Posted on 10/4/01; updated 5/1/03)

1. Do I need to rescind the nonpublication request?
   
   
2. Is the U.S. application abandoned because the certification is improper?
   
   
3. Do I need to file a petition to revive the abandon application due to failure to notify the Office of the PCT application under 37 CFR 1.137(f)?
   
   
4. Is there anything I can do to correct the improper certification so that the validity or enforceability of any patent issuing from the U.S. application is not jeopardized?

1. Yes. The request to rescind (USPTO form PTO/SB/36) should be filed promptly. Since the PCT application was filed prior to the filing of the U.S. application, the applicant or the representative should not have certified that the invention disclosed in the U.S. application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication. See 35 U.S.C. 122(b)(2)(B)(i). The U.S. application is subject to publication under the eighteen-month publication provisions of AIPA.
   
   
2. The Office will not treat the U.S. application as abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii). The statute only provides for that an application is regarded as abandoned when the applicant fails to notify the Office within 45 days of a subsequently filed application that is directed to the same subject as the invention of the US application in another country, or under a multilateral international agreement, that requires eighteen-month publication. 35 U.S.C. 122(b)(2)(B)(iii) does not apply to the situation when the applicant made an improper certification subsequent to the foreign filing
   
   
3. A petition to revive under 37 CFR 1.137(f) is inappropriate because the application is pending (unless the application is abandoned for other reasons). If a petition to revive under 37 CFR 1.137(f) is filed, the Office will dismiss the petition as inappropriate but retain the petition fee because the Office was required to evaluate the merits of the petition before being able to determine that the petition was not appropriate.
   
   
4. Applicants and their representatives should make sure that the certification is proper before signing and filing it with the Office. While applicants should rescind any improper certification as soon as possible, 35 U.S.C. 122(b)(2)(B)(i)-(iv) does not include any provision for "correction" of an improper certification. Any applicants or their representative, however, who makes a false statement (e.g., an improper certification) may be violating 37 CFR 10.18(b). In addition, such false statements by registered patent practitioners may also violate other Disciplinary Rules, 37 CFR 10.20-10.112. While applicant cannot undo the fact that an improper certification was made in this application, with the filing of the rescission request applicant may explain that the original certification was improper.

CR. Notice of Publication

CR1. How will I know when my patent application has been published? (Posted on 6/27/01; updated on 10/17/01; renumbered from C25)

Applicant will be mailed a notice with the publication number and publication date. This notice is now being mailed on the publication date.

CR2. Will the Office mail a notice if the publication date is changed? (Posted on 6/27/01; renumbered from C26)

Yes, a "Notice of New or Revised Publication Date" is mailed if the publication date changes by more than six weeks due to processing delays, a secrecy order being removed, or subsequent to the revival of an abandoned application. If the publication date is changed, or the application is not to be published because the application is abandoned and the abandonment is recognized more than nine weeks before the projected publication date, then the Notice of Abandonment will serve as the communication that the application will not be published. If applicant adds or deletes a priority claim so that the 18-month publication date is changed, applicant will be mailed a corrected filing receipt, informing applicant of the newly assigned publication date.

CS. Notice of Allowance and Fee(s) Due (Publication Fee Due)

CS1. I received a "Notice of Allowance and Fee(s) Due" requiring a publication fee. I have the following questions regarding the publication fee. (Posted on 6/01/01; renumbered from CB1; updated on 2/27/02, 8/01/02 and 5/5/03)

(a) The projected publication date of my application is not for another nine months. Surely the patent will issue before that date. Do I still need to pay the publication fee?

Yes. You must pay the publication fee within the time period set forth in the Notice, and may request a refund if the application is not published.

(b) If I pay the publication fee, but the patent issued and the application has not published, where should I mail the refund request?

The refund request should be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

Mail Stop PGPUB
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.

(c) I filed a continuation on or after November 29, 2000. The prior application has issued as a patent. Why do I need to pay a publication fee for publication of this application when the parent (which has the same disclosure) has issued as a patent?

The statute requires all applications to be published, not just applications that do not claim the benefit of any other application and authorizes the USPTO to recover the publication fee when the continuation application is allowed. You must pay the publication fee when the continuation application is allowed because the continuation application has been or will be published, and because a non-publication request was not made on filing in an application that is subject to publication under 35 U.S.C. 122(b).

CS2. I received a Notice of Allowance and Fee(s) Due requiring payment of the publication fee. I, however, forgot to pay the publication fee within the 3-month period for reply set forth in the notice. What do I need to submit to make sure that the application will issue as a patent? (Posted on 3/04/02; updated on 8/01/02).

In this situation, you will need to file a petition to revive an abandoned application for failure to timely pay the publication fee under 37 CFR 1.137(b). See MPEP 711.03(c), pages 700-140 and 700-141 (August 2001). You may use the form PTO/SB/64 available on the USPTO web site at http://www.uspto.gov/web/forms/sb0064.pdf. The petition must accompanied by: (1) the petition fee as set forth in 37 CFR 1.17(m); (2) the publication fee; a complete reply to the notice (i.e., the issue fee, corrected drawing, etc.); and (3) a statement that the entire delay in filing the reply and/or fee(s) from the due date until the filing of a grantable petition was unintentional. In addition, if a complete reply to the Notice of Allowance was not filed (e.g., if the issue fee was also not paid, and any drawings, declaration, or biological deposit was not filed), then a complete reply to the Notice of Allowance must also be filed. The petition and an authorization to charge the fees to a deposit account or credit card may be faxed to the Office of Petitions (703) 308-6916.

CT. Patent Application Information Retrieval (PAIR)

CT1. How can I use private PAIR to correct bibliographic data? (Posted on 6/27/01; renumbered from C14)

In the private side of PAIR (http://pair-direct.uspto.gov), the applicant should choose the Publication Review button, and then the Request Data Change button on the screen. The instructions will then be brought up, with a data entry box in which the changes can be inserted. For instance, the following text should be typed in the box: "An inventor has been omitted. John Doe should be added with a residence of Arlington, VA." Once the entry has been checked for accuracy, the Transmit Request button should be selected, and the information will be electronically sent to the USPTO. A copy of the request will not be placed in the patent application file, and applicant should only submit a request through PAIR to correct information where the computer records show information that is different from the application file. Requests filed through PAIR will come into the Electronic Business Center (EBC) Customer Support Center, where the data will be changed in the USPTO's computer database, and, once the data is corrected, the changes can be displayed in PAIR, and the EBC will mail the applicant a corrected filing receipt. The Customer Support Center of the Electronic Business Center can be reached by telephone at (703)305-3028. A request for a corrected filing receipt should not be submitted if the request is submitted through PAIR, since the PAIR request will result in the same correction being made.

For more information on PAIR, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm).

CT2. I can't find a bibliographic review button in private PAIR. I only see a contents button. Where is it? (Posted on 6/27/01; renumbered from C15)

The bibliographic review button is only available for applications assigned a projected publication date.

CT3. What do I need to type in Public PAIR to retrieve an application? The number that I type to view the application (using http://www.uspto.gov/patft) does not work. (Posted on 6/27/01; renumbered from C16)

The four-digit year, a dash, a seven digit number reflecting the part of the publication number not including the year, a dash and a two digit kind code. For example, type "2001-0000241-A1." "US-2001-0000241-A1" also works.

CT4. has been deleted as being obsolete. (Posted on 6/27/01; updated 7/9/01; renumbered from C17; deleted 8/01/02)

CT5. What information cannot be corrected through PAIR? (Posted on 6/27/01; renumbered from C18)

PAIR should only be used to conform the Office's electronic records with the patent application file. For example, if the originally-submitted oath or declaration was signed by three inventors, but the filing receipt lists two, a request can be made through PAIR to add the inventor. If the originally filed executed declaration named an inventor who should not have been named as an inventor, or did not include someone who should have been included as an inventor, then applicant must file the appropriate papers under 37 CFR 1.48. Similarly, to change the order of the inventors from that shown on the oath or declaration, a petition under 37 CFR 1.182 is required and PAIR is not the appropriate mechanism.

CT6. Can I add the assignment information to be printed on the patent application publication through PAIR's bibliographic data change request screens? (Posted on 6/27/01; renumbered from C19)

Yes. Although applicants may request publication of the name of the assignee of an application (if the assignment has already been recorded or is being submitted for recordation) on the patent application publication by the use of the PAIR system, this does not replace recordation of the assignment documents. The assignment documents should continue to be forwarded with the cover sheet and fee to the Assignment Division. A corrected filing receipt will be mailed to applicant once the request for entry of the assignment has been processed by the Electronic Business Center.

CT7. Who should I contact to have a contents entry error in PAIR corrected? (Posted on 6/27/01; renumbered from C32)

If the error is a contents entry other than the filing date of an application, including a Continued Prosecution Application (CPA), contact the Customer Service Representative (Representative) for the Technology Center (TC) where your application is assigned. If you are alleging that the date shown in PAIR is an incorrect date, then the Representative may need documentary evidence (e.g., an Express Mail label or a post card receipt) showing that the paper was received on a certain date. Note that the certificate of mailing date (which may be relied upon for timely filing purposes) is not retained in the USPTO PALM records, and that the date a paper is considered received in the Office is the date that the USPTO actually received the papers, unless the paper was filed using Express Mail under 37 CFR 1.10. The Representative will obtain the application file wrapper and determine whether there is an error in the USPTO's records. If there is a date error, the records will be corrected. If the error is in the filing date of an application, including a CPA, a filing date petition is required. Contact the Office of Petitions by telephone at (703)305-9285 or by fax at (703)308-6916 for further information.

CU. Patent Application Publication

CU1 has been deleted because the information is provided in CR1 Q&A. (Updated on 2/27/02)

CU2. How do I access my patent application publication on the Internet? (Posted on 10/4/01)

The publication will be available on the USPTO home page in the Searchable Patent Databases section http://www.uspto.gov/patft and information about the application will also be available on PAIR (Public and Private).

CV. Patent Rules

CV1. Where do I find patent rules applicable to Pre-Grant Publication on the Internet? (Posted on 10/4/01)

Go to http://www.uspto.gov/web/offices/dcom/olia/aipa/. Click on Rules, Patent. Alternatively, go to http://www.uspto.gov/web/offices/dcom/olia/aipa/pgpfr.pdf for Changes To Implement Eighteen-Month Publication of Patent Applications; Final Rule, 65 FR 57024 (September 20, 2000).

CW. Pre-Grant Publication (AIPA) Forms

CW1. What AIPA Forms are available on the USPTO web site? (Posted on 10/4/01)

Go to http://www.uspto.gov/web/offices/dcom/olia/aipa/forms.htm for the following forms.

• Complaint Form Regarding Invention Promoter (PTO/2048)
• Credit Card Payment Form (PTO/2038)
• Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i) (PTO/SB/35)
• Request for Continued Examination (RCE) Transmittal(PTO/SB/30)
• Request for Deferral of Examination Under 37 CFR § 1.103(d) (PTO/SB/37)
• Request to Rescind Previous Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(ii)(PTO/SB/36)

Go to http://www.uspto.gov/web/forms/index.html for these and other USPTO forms. Go to http://www.uspto.gov/web/forms/qas.html for frequently asked questions about USPTO forms.

CX. Priority claims

CX1. When the National Stage of an International Application is entered as to the United States, should the first line of the specification be amended to recite the relationship of the National Stage to the International Application and/or should the language of publication of the International Application by the International Bureau be set forth? (Renumbered from C8)

Neither the relationship of a National Stage application to the International Application, nor the language of publication by the International Bureau should be set forth in the first line of the specification of the National Stage application. An International Application is not a prior application as to the National Stage (they are legally the same application), therefore amended 37 CFR 1.78(a)(2) does not apply.

CX2. If a 35 U.S.C. § 111(a) continuation of the same International Application is filed, should the first line of the specification of the continuation application be amended to contain the relationship to the International Application? (Renumbered from C9; updated on 12/11/02)

When a § 111(a) continuation of an International Application is filed on or after
November 29, 2000, the first line of the specification must be amended, or an
application date sheet must be submitted, within the time period set in
amended 37 CFR 1.78(a)(2) to contain a reference to the relationship of the §
111(a) continuation to the prior international application. For example, the
language --This application is a continuation of YY/123,456, which was a national stage filing under 35 U.S.C. 371 of PCT/XX99/01234 filed June 1, 1999.--

CX3. I filed a continued prosecution application (CPA) in a 1.53(b) application that did not include a continuity claim to an earlier nonprovisional application. I now want to add the continuity claim to the earlier nonprovisional application under 35 U.S.C. 120 in the CPA. The 1.53(b) application was filed before 5/29/00, and the CPA was filed on or after 11/29/00. The time period set forth in 37 CFR 1.78(a) (2) (i.e., the later of 4 months from the actual filing date of the CPA or 16 months from the filing date of the earlier nonprovisional application) for filing a benefit claim to the earlier nonprovisional application applies to the CPA. Such time period, however, has expired for adding the reference of the earlier nonprovisional application in the first sentence of the specification or in an application data sheet, even if the time period is measured from the filing date of the CPA. What do I need to submit for claiming the benefit of the earlier nonprovisional application? (Posted on 3/4/02)

A. You will need to file: (1) a petition under 37 CFR 1.182 requesting entry of an amendment into an abandoned application; (2) the petition fee set forth in 37 CFR 1.17(h); and (3) an amendment to add the reference of the earlier application to the first sentence of the specification. 35 U.S.C. 120 permits the entry of a subsequent amendment in an abandoned application to include the benefit of an earlier filing date for purposes other than prosecution. See Sampson v. Commissioner, 195 USPQ 136 (D.D.C. 1976). Please note that a petition to accept an unintentionally delayed claim under 37 CFR 1.78(a)(3) and the surcharge under 37 CFR 1.17(t) are not required in the CPA since the rule specifically provides for an exception for continued prosecution applications.

CY. Projected Publication Date, see Filing Receipt

CZ. Provisional applications

CZ1. Will provisional applications be published under the 18-month publication provisions of AIPA? (Posted on 10/4/01)

No, provisional applications are not eligible for publication.

CAA. Provisional Rights

CAA1. Does the American Inventors Protection Act of 1999 address the issue of royalty payments by companies who knowingly violate an invention claimed in a published patent application for infringement that occurs before the patent grant date? (Posted 5/23/00; Renumbered from C3, updated on 2/27/02)

In the American Inventors Protection Act of 1999 (AIPA) Subtitle E - Domestic Publication of Patent Applications Published Abroad, Section 4504 on Provisional Rights addresses this very issue. By the terms of the AIPA, an eventual patentee will be able to obtain a reasonable royalty from any person, having actual notice, who "infringes" the claimed invention during the period beginning on the date of publication of the application and ending on the date the patent is issued. The right to recover a reasonable royalty is based upon actual notice and is only available if the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

CAA2. Does the Office intend to provide guidance as to the meaning of the term "substantially identical" as used in AIPA § 4504 to define when reasonably royalties will be available (35 U.S.C. 154(d)(2))? (Posted 5/23/00; Renumbered from C4)

No, because the PTO is not charged with administering provisional rights.

CAA3. Applications filed on or after 11/29/00 will be published by the USPTO 18 months after the earliest filing date claimed under title 35 U.S.C., unless the applicant requests an earlier publication or the applicant requests that the application not be published. The patent rights allow for a reasonable royalty from the date of publication to the date of issuance. Can I request that my application be published even though I filed before 11/29/00? (Updated 7/9/01; renumbered from C6; updated 2/27/01)

Yes, provided that the application is pending on November 29, 2000 and your request complies with 37 CFR 1.211. The right to reasonable royalties is subject to a number of conditions: e.g., (1) actual notice of the published application must be given; and (2) the patent claims must be substantially identical to the claims in the published application.

CAB. Questions Regarding the Publication of Patent Applications

CAB1. I have some questions regarding publication of patent applications. Who can help me? (Posted on 10/4/01, updated on 2/27/02 and 5/5/03)

For Pre-Grant Publication questions, please contact the PGPub hotline at (703) 605-4283 or PGPub@uspto.gov. The Office of Patent Publication has a help desk that can be reached at (703)305-8283. The Customer Service Representatives in each Technology Center will be able to help you with respect to nonpublication requests and other matters regarding specific applications.

CAC. Redacted Publication

CAC1. How do I request for publication of a redacted copy of an application? (Posted on 10/4/01)

If the application filed in the USPTO includes description that is more extensive than any previously filed foreign applications, applicant may submit a redacted copy of the US application for publication, eliminating the description of the invention that is not also contained in any of the foreign corresponding applications. The applicant must file the redacted copy of the application using EFS in compliance with 37 CFR 1.217. If the redacted copy of the application does not meet the EFS requirements, the USPTO will publish the application as unredacted. The redacted copy of an application must be submitted within 16 months after the earliest filing date for which a benefit is sought under title 35, USC.

CAC2. When an applicant submits a request via EFS for a redacted publication, do they need to label the sections in the redacted application as "redacted"? (Posted on 10/4/01)

37 CFR 1.217 requires that a number of items be submitted for a redacted publication, but labeling the redacted sections in the EFS version as redacted is not required.

CAD. Rejections, 35 U.S.C. 135(c)

CAD1. Can an examiner reject a claim in an application being examined under 35 U.S.C. 135(b)(2) as being statutorily barred by the publication of another application? (Posted 6/29/00; Renumbered from C5)

Yes. Applicants have one year from the publication date of a published application to present the same or substantially the same claim as a claim in a published application. When the claim is, however, presented later than one year after the publication date, a rejection under 35 USC 135(b)(2) is proper. Thus, a rejection under § 135(b)(2) should be made when:

1. The effective filing date of the claim in an application being examined is later than the publication date of the published application;
   
2. The application being examined is claiming the same invention as claimed in the application publication, i.e., the claim in the application being examined is the same as, or for the same or substantially the same subject matter as, the published claim in the application publication; and
   
3. The presentation of the claim in the application being examined is later than one year after the publication date of the published application

Note:

1. A rejection under 35 USC 102(a) and 102(e) should also be made, since the effective filing date of the claim in the application being examined is later than the publication date of the published application.
   
   
2. The published application could be a U.S. patent application or an international application designating the United States

CAE. Request for Continued Examination

CAE1. When an applicant files a Request for Continued Examination (RCE), will the filing cause the application to be subject to publication? (Posted on 10/4/01)

The filing of an RCE on or after 11/29/00 has no impact on publication of the application. The application will be published or not published based on the application filing date. If the application is filed before 11/29/00 (and no CPA has been filed on or after 11/29/00), the application will not be published. If the application (including a CPA) has been filed on or after 11/29/00, the application will be published. A filing of an improper CPA that has been treated as an RCE also has no impact on publication of the application.

CAE2. If I filed a RCE on 3/5/01 for an application that was filed before November 29, 2000, do I have to pay a publication fee? (Posted on 10/4/01, updated 2/27/02)

No, the filing of the RCE does not cause the application to be subject to publication. The applicant should not receive a filing receipt with a projected publication date or a Notice of Publication Fee Due. If applicant receives a filing receipt indicating that the application is projected to be published, applicant should fax the transmittal letter for the RCE and a post card receipt for the RCE to PGPub Division at (703) 305-8568 with an explanation that the application was filed before November 29, 2000 and should not be scheduled for publication. A follow-up phone call should be made to one of the contacts listed in the CAB1 Q&A such as Tammy Koontz at 703-605-4283, Marcia Campbell at 703-305-4322, or Jon Lachel at 703-605-4285. The transmittal letter serves as proof that an RCE not a CPA was filed. If the applicant notifies the Office more than 4 weeks prior to the projected publication date, the application may be removed from publication process, but a later request will not remove the application from publication.

The applicant should reply to the Notice of Publication Fee Due with the following statement.

"I request that this notice be vacated as being in error. The application is not subject to publication as the application was not filed on or after November 29, 2000."

CAF. Rescinding non-Publication Requests

CAF1. I would like to rescind a non-publication request. Where should I direct the papers? (Posted on 6/27/01; renumbered from C35; updated 2/27/02 and 5/5/03)

A request to rescind a previously filed nonpublication request may be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

Mail Stop PGPUB
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.

CAF2. Does an applicant who rescinded his non-publication request pursuant to 35 U.S.C. 122(b)(2)(B)(ii) prior to filing abroad have any duty to provide notification of the foreign filing under 35 U.S.C. 122(b)(2)(B)(iii) (Posted 5/1/03)?

Yes, notice of foreign filing is still required. Rescission does not nullify a nonpublication request. Rescission revokes the nonpublication request, but it does not erase the fact that the nonpublication request was made because a nonpublication request is more than a request that the application not be published, it is also an affirmative statement that the “invention disclosed in the application has not been and will not be the subject of an application in another country.” If notice of foreign filing wasn't important even when the nonpublication request had been rescinded, then Congress would not have included both sections (ii) and (iii) in the statute (rescission and notice of foreign filing, respectively).

35 U.S.C. 122(b)(2)(B) states (in part):

(ii) An applicant may rescind a request made under clause (i) at any
time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).

Furthermore, if 35 U.S.C. 122(b)(2)(B)(iii) clearly excluded applications in which a rescission had been made from the those applications in which notice of foreign filing was required, then such applications would not be required to have a notice of foreign filing. The request for nonpublication, however, is more than simply requesting nonpublication, it is an affirmative statement that the application has not been and will not be filed abroad. Therefore, one cannot simply rescind the nonpublication request and have the record be clear as to whether applicant has or will file in another country or under an international treaty (e.g., PCT) that requires publication. Since the statute does NOT exclude applications with rescissions from those applications in which a notice of foreign filing is required, all applications in which applicant has informed the Office that they will not “foreign file” via a nonpublication request require a notice from the applicant that, in effect, they changed their mind by providing an affirmative notice of foreign filing. See 35 U.S.C. 122(b)(2)(B)(iii).

An applicant or patentee who merely rescinded their nonpublication request, and did not tell the Office that they foreign filed (and has foreign filed and did not provide notice before the date that is 45 days after the date of foreign filing) should promptly file a petition to revive or consider the application abandoned.

CAG. Royalty- see Provisional Rights

CAH. Voluntary Publication

CAH1. If my application was filed prior to November 29, 2000, how do I request a voluntary publication? (Posted on 10/4/01)

A request for voluntary publication must be filed via the Electronic Filing System (EFS) in compliance with 37 CFR 1.221. If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed. Any processing fee paid (including those authorized to be charged, e.g., to a deposit account) will be retained. If applicant meets the EFS requirements, but does not include the publication and processing fees as set forth in 37 CFR § 1.18(d) (currently $300) and 1.17(i) (currently $130), respectively, the Office will send the applicant a letter requiring the fees. The publication of the application will be delayed.

Alternatively, if the application was filed before 5/29/00 (and no prior CPA was filed on or after 5/29/00), the application may become eligible for publication, if the applicant files a CPA. The contents of originally filed prior application will be published. The disadvantage to filing a CPA rather than an EFS submission is that any amendments will not be published with the application. A CPA may not be filed in an application filed after May 29, 2000.

For more information on voluntary publication, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm).

CAH2. I have sent a request for voluntary publication of an application that was filed before 11/29/00 and was pending on 11/29/00, with the processing fee of $130 and the publication fee of $300, but I didn't submit a copy of the application in compliance with the Office's electronic filing system (EFS) requirements, will the Office refund the publication fee and the processing fee of $130? (Renumbered from C10)

The request is improper, and will not be accepted. The Office will refund the publication fee, but not the processing fee. Should applicant still desire voluntary publication, a new request accompanied by both the publication fee and a second processing fee should be submitted. For more information on the EFS requirements, you may contact the Office's Electronic Business Center at http://www.uspto.gov/ebc/index.html or 800-786-9199 or 703-308-4357.

CAH3. Is there a form for a voluntary publication request? (Posted on 6/27/01; renumbered from C29)

Yes, it is created by the use of the Electronic Filing System, which is the only means to request voluntary publication of an application. See 37 CFR 1.221(a).

CAH4. How can I get an application filed before 11/29/00 published without using the Electronic Filing System? (Posted on 6/27/01; updated 7/9/01; renumbered from C30)

If the application was filed before May 29, 2000, you may file a continuation under 37 CFR 1.53(b) or (d). If a continuation under 37 CFR 1.53(d) (a CPA) is to be filed, remember that the application as originally filed is used to create the patent application publication, so any amendments will not be reflected in the publication. As a result, applicants are encouraged to file a continuation under 37 CFR 1.53(b) instead of under 37 CFR 1.53(d). If the application was filed after May 29, 2000, only a continuation under 37 CFR 1.53(b) may be filed.

CAI. What Applications are Subject to Publication?

CAI1. Will Divisionals, Continuations-in-Part, Continuations, and/or Continued Prosecution Applications (CPA) filed on or after 11/29/00 (the effective date of the eighteen-month publication provisions of the AIPA), based on original applications filed before the effective date, be subject to the mandatory publication? (Renumbered from C2)

Yes. Any nonprovisonal application (other than for a design patent) filed on or after November 29, 2000 is subject to the eighteen-month publication provisions of the AIPA. This includes continuation, divisional, and continuation-in-part applications of applications filed prior to November 29, 2000. It does not matter whether the continuing application was filed under 37 CFR 1.53(b), or as a CPA under 37 CFR 1.53(d). Since a request for a continued examination (RCE) under 37 CFR 1.114 is not a continuing application, filing a RCE of an application filed prior to November 29, 2000 will not make that application subject to the eighteen-month publication provisions of the AIPA.

CAI2. Do reissue applications get published under 35 U.S.C. 122(b)? (Posted on 6/27/01; renumbered C33)

No, they are published with a notice in the Official Gazette - Patents, stating that the application has been filed. Reissue applications are open to public inspection. See 37 CFR 1.11(b). If you receive a filing receipt for a reissue application and the filing receipt has a projected publication date, contact the Customer Service Representative where your application is assigned. They can have the application withdrawn from publication under 35 U.S.C. 122(b).

CAJ. When is the Publication Fee Required?

CAJ1. When does the applicant have to pay the publication fee? (Posted on 10/4/01; updated 8/01/02)

For a voluntary publication, early publication, or republication the applicant must pay the publication fee at the time applicant requests such publication (i.e., at the time of filing the EFS submission). For publication of an application filed on or after November 29, 2000, a notification of the publication fee due will be provided in the Notice of Allowance and Fee(s) Due. If the publication (or issue) fee is not timely paid, the application will be abandoned for failure to reply to the Notice of Allowance.

CAK. Where are Published Applications?

CAK1. Where can I find patent application publications? (Posted on 6/27/01; renumbered from C24)

When an application is published, the publication will be included on the USPTO home page in the Searchable Patent Databases section (currently http://www.uspto.gov/patft) and information on the published application will be included on the public side of PAIR (see http://pair.uspto.gov).

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D. 102(e)

D1. Deleted on 11/6/02, renumbered D13.

D2. What is the full title of the act that recently revised 35 U.S.C. 102(e) and 374, and where can I locate a copy of it? (Posted 12/13/02)

The Intellectual Property and High Technology Technical Amendments Act of 2002 (Technical Amendments Act), which contains the revisions to 35 U.S.C. 102(e) and 374, is part of the Public Law 107-273 entitled "21st Century Department of Justice Appropriations Authorization Act." The revisions to 35 U.S.C. 102(e) and 374, and the effective date provisions, are in section 13205. The text of the Act can be located at the Library of Congress website at http://thomas.loc.gov/home/thomas.html or the Government Printing Office's website at http://www.access.gpo.gov/nara/publaw/107publ.html.

D3. I have a patent application that was filed prior to November 29, 2000 (or claims benefit or priority to an application filed prior to November 29, 2000). Does the revised 35 U.S.C. 102(e) apply to this patent application? (Posted 12/13/02)

Yes. 35 U.S.C. 102(e), as amended by the Technical Amendments Act, must be applied to all patent applications no matter when filed. In other words, the revised statute applies to patent applications filed prior to the effective date of November 29, 2000 as well as to patent applications filed on or after November 29, 2000. Additionally, the revised 35 U.S.C. 102(e) applies to all patents under reexamination or other proceedings challenging the patent. One of the reasons for the Technical Amendments Act was to provide for application of the revised statute to all patent applications, regardless of the filing date, and all patents.

D4. What is meant by the "National Stage" of an international application (IA)? (Posted 12/13/02)

An IA has two possible phases of processing: an international phase and a national stage phase. The international phase is when the search report and the preliminary examination report (if applicable) are prepared. A U.S. patent cannot be directly granted from the international phase of an IA, but can be issued directly from the national stage (35 U.S.C. 371) of an IA. The national stage is entered where certain requirements are met before the expiration of certain time limits (see 35 U.S.C. 371 and 37 CFR 1.491). The national stage of an IA is prepared by placing a copy of the IA, and other related papers, inside a regular US application file jacket, whereupon it is assigned a US application number, and processed under the US statutes and regulations applying to national stage applications. See the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001), sections 1893 et seq.

D5. Does this change in the law mean that the 35 U.S.C. 371(c)(1), (2) and (4) date is "no longer a US filing date?" (Posted 12/13/02)

The date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled (e.g., the 371(c) date) is not, and never was, a US filing date even prior to the AIPA revision to 35 U.S.C. 102(e). Prior to the amendments to 35 U.S.C. 102(e) by the American Inventors Protections Act of 1999 (AIPA), 35 U.S.C. 102(e) (e.g., pre-AIPA 102(e)) simply equated the 371(c) fulfillment date to a US filing date for prior art purposes. Although the USPTO uses the 371(c) date like a US filing date for processing purposes (and even indicates the 371(c) date as the US filing date on the official filing receipt), legally the 371(c) date was never considered to be a US filing date. The national stage application continues to be considered filed on the international filing date for all purposes except as provided in 37 U.S.C. 102(e). See the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001), section 1893.03(b).

D6. Can a reference available as prior art under the amended 35 U.S.C. 102(e) be disqualified under 35 U.S.C. 103(c) if such reference is used in a 103(a) rejection? (Posted 12/13/02)

Yes, the Technical Amendments Act (Pub. L. 107-273) did not amend 35 U.S.C. 103(c).

D7. If a reference became material to the patentability of the claims in view of the amended 35 U.S.C. 102(e), could the applicant make a statement under 37 CFR 1.97(e)(2) when submitting such reference in an IDS under 37 CFR 1.97(c) or (d) even though the reference was known to the applicant more than three months before the enactment of the Technical Amendments Act of 2002 that amended 35 U.S.C. 102(e)? (Posted 12/13/02)

No, 37 CFR 1.97(e)(2) requires no item of information contained in the IDS was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, no item of information contained in the IDS was known to any individual designated in 37 CFR 1.56(c) more than 3 months prior to the filing of the statement.

D8. If an application has been allowed, but has not yet issued as a patent, and a rejection now can be made using a reference that becomes available as prior art under the amended 35 U.S.C. 102(e), can the examiner withdraw the application from issue? (Posted 12/13/02)

Yes, the examiner may withdraw the application from issue with the approval of the Technology Center Director and in accordance with the procedures set forth in section 1308 of the Manual of Patent Examining Procedure (MPEP) 8th Edition (August 2001).

D9. A 35 U.S.C. 102(e) rejection was made based on a US patent application publication in an application filed before 11/29/00. After the applicant had argued that such reference was not available as a prior art under 35 U.S.C. 102(e) as amended by AIPA (before the enactment of the Technical Amendments Act of 2002 (Pub. L. 107-273), the rejection was withdrawn and the case was allowed and issued as a patent. Could the application publication now be used as the sole basis for a reexamination to establish a substantial new question of patentability? (Posted 12/13/02)

Yes, a reexamination based on a patent or printed publication that was previously considered by the Office is no longer subject to the Portola bar pursuant to 35 U.S.C. 303(a) and 312(a) as amended by the Patent and Trademark Office Authorization Act of 2002 (Pub. L. 107-273).

D10. When did the 35 U.S.C. 102(e) dates stop being printed on patents? (Posted 12/13/02)

The Office stopped printing the 102(e) dates on patents with the issue of May 28, 2002.

D11. Are the 35 U.S.C. 102(e) dates printed on patents issued before May 28, 2002 accurate in view of the amended 35 U.S.C. 102(e)? (Posted 12/13/02)

In most situations, the 35 U.S.C. 102(e) dates printed on patents are accurate (e.g., a patent issued from the national stage of an international application filed before 11/29/00). In a few situations, the printed 35 U.S.C. 102(e) dates may not be accurate because the 35 U.S.C. 102(e) dates printed on patents are based on the entry date of the national stage and not the international filing date (e.g., a patent issued from the national stage of an international application filed on or after 11/29/00). A US patent issued from an international application filed on or after 11/29/00 may have a 35 U.S.C. 102(e) date as of the international filing date or none under the amended 35 U.S.C. 102(e). See Flowchart I.

D12. Will the 35 U.S.C. 102(e) dates be printed on patents in the future? (Posted 12/13/02)

Currently, there is no such plan.

D13. If an International Application (IA) was published by the World Intellectual Property Organization (WIPO) in a language other than English (i.e., German) and designates the United States, is there any action that can be done (i.e., filing an English translation) to make the published IA eligible to be prior art under amended 35 U.S.C. 102(e)? (Previously D1, amended and posted 12/13/02)

No. 35 U.S.C. 102(e) and 374, as amended by American Inventors Protection Act of 1999 (AIPA) (Pub. L. 106-113) and as further amended by Technical Amendments Act of 2002 (Pub. L. 107-273), is applicable to the WIPO publication of the IA. 35 U.S.C. 102(e), in combination with 35 U.S.C. 374, clearly state that the WIPO publication of an IA only receives a 35 U.S.C. 102(e) prior art date if the IA is published under PCT Article 21(2) in English and designated the United States. Therefore, the IA must have been: 1) filed on or after November 29, 2000, 2) published by the WIPO pursuant to PCT Article 21(2) in English, and 3) designated the United States in order for the WIPO publication to be available as prior art under 35 U.S.C. 102(e). Any filing of an English translation will not be effective in obtaining a 35 U.S.C. 102(e) prior art date for the publication of the IA published by the WIPO in a language other than English.

D14. Can an international application be published multiple times in different languages by the World Intellectual Property Organization (WIPO) under PCT Article 21(2)? (Posted 12/13/02)

No, WIPO only publishes an international application in a single publication language in accordance with PCT Article 21(2). WIPO may republish an international application in the same publication language when there is an error in the original publication from what should have published (e.g., publishes the wrong drawings or leaves out a page of claims, etc.). There currently is no vehicle for republication in a different language.

D15. Is the USPTO publishing the national stage (35 U.S.C. 371) of an international application under the eighteen month publication provisions (35 U.S.C. 122(b))? (Posted 12/13/02)

Yes.

D16. How are the revisions to 35 U.S.C. 102(e) and 374 in the Technical Amendments Act of 2002 (Pub. L. 107-273) different from the revisions to 35 U.S.C. 102(e) and 374 in the American Inventors Protection Act of 1999? (Posted 12/13/02)

The revisions to 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 completely replaced the corresponding AIPA versions and are retroactively effective to the effective date of the AIPA amendments to 35 U.S.C. 102(e) and 374 (November 29, 2000). The following briefly summarizes the major differences:

1. Revised 35 U.S.C. 102(e) (Pub. L. 107-273) generally accords the same prior art date to references of the same application whether it was published as a US patent, a US patent application publication or a WIPO publication. There are limited situations where the US patent may have a different prior art date under 35 U.S.C. 102(e) than the corresponding US patent application publication or a WIPO publication. For example, when the application is based directly on the national stage (35 U.S.C. 371) of an International Application (IA) filed prior to November 29, 2000, however, the US patent has a different 35 U.S.C. 102(e) date for prior art purposes (the 35 U.S.C. 371 date) than the US application publication or the WIPO publication (no 102(e) date). Under the AIPA (prior to the Technical Amendments Act), a US patent application publication of an application could have a much earlier 35 U.S.C. 102(e) date than the corresponding US patent of that same application. This resulted from that fact that the prior art date under 35 U.S.C. 102(e) for US patent application publications could be the international filing dates (even prior to 11/29/00) if certain conditions were met, but US patents could never be prior art under 35 U.S.C. 102(e) as of the international filing date.

2. Revised 35 U.S.C. 102(e) and 374 in Pub. L. 107-273 are applicable to all applications under examination, no matter when filed and all US patents under reexamination or being contested. 35 U.S.C. 102(e) and 374 per the AIPA (prior to the Technical Amendments Act) were only applicable to certain applications, e.g., those filed on or after November 29, 2000 or voluntarily published under 35 U.S.C. 122(b).

3. Revised 35 U.S.C. 102(e) per Pub. L. 107-273 is applicable to all international applications filed on or after 11/29/00 (it does not require national stage entry in the United States). 35 U.S.C. 102(e) per AIPA (prior to Technical Amendments Act) required entry into the national stage in order to be applicable.

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E. 103(c)

E1. Does a Continued Prosecution Application qualify for the new provisions of 35 U.S.C. 103 (c) as specified in Section 4807 of the American Inventors Protection Act?

Yes, see Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term "Original Application" in the American Inventors Protection Act of 1999, Notice, 1233 OG 54 (April 11, 2000).

E2. Under the amended 35 U.S.C. 103(c), what type of evidence will provide proof that the inventions were commonly owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made?

To disqualify a reference under 35 U.S.C. 103(c), applicant needs to supply evidence that the invention described in the application for patent and the invention described in the "prior art" reference applied against the application were commonly owed by, or subject to an obligation of assignment to, the same person, at the time the invention in the application for patent was made. The time requirement "at the time the invention was made" is required by statute. See 35 U.S.C. 103(c).

Applications and references will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, at the time the invention was made, if the applicant(s) or an attorney or agent of record makes a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. Thus, a statement, by itself, will be sufficient evidence. For a more detailed explanation, see the "Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 U.S.C. 103(c)," 1241 OG 96 (Dec. 26, 2000).

E3. What applications qualify for the prior art exclusion of 35 U.S.C. 103(c), as amended by the AIPA, of commonly owned or assigned prior art? (Posted on 12/6/01; updated 8/01/02)

The amendment to 35 U.S.C. 103(c) made by the AIPA is effective for applications filed on or after November 29, 1999. For the National Stage (35 U.S.C. 371) of International Applications, the international filing date must be on or after November 29, 1999 in order for applicant to invoke the exclusion of prior art under 35 U.S.C. 103(c) as amended by the AIPA. The date the applicant fulfilled the requirements of 35 U.S.C. 371(c)(1), (2) and (4) is not relevant in determining whether the application is entitled to the prior art exclusion under 35 U.S.C. 103(c) as amended by the AIPA. If a continuing application is filed after November 29, 1999, and claims the benefit of the prior international application filed prior to November 29, 1999, such continuing application would be entitled to revised exclusion provided in 35 USC 103(c). See "Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term "Original Application" in the American Inventors Protection Act of 1999," Notice, 1233 OG 54 (April 11, 2000) and "Guidelines Setting Forth a Modified Policy Concerning the Evidence of Common Ownership, or an Obligation of Assignment to the Same Person, as Required by 35 USC 103(c)," Notice, 1241 OG 96 (Dec. 26, 2000).

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