Implementation of the American Inventors Protection Act of 1999 (Public Law 106-113)

1. Implementation of the American Inventors Protection Act of 1999 (Public Law 106-113) Stephen G. Kunin Commissioner for Patent Examination Policy

2. American Inventors Protection Act of 1999 • Inventor’s Rights - Interim rule: 65 Fed. Reg. 3127 (Jan. 20, 2000), 1231 Off. Gaz. Pat. Office 37 (Feb. 8, 2000) • Patent Term Adjustment - Final rule: 65 Fed. Reg. 56365 (Sept. 18, 2000), 1239 Off. Gaz. Pat. Office 14 (October 3, 2000) • Request for Continued Examination (RCE) - Final rule: 65 Fed. Reg. 50091 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000), and interim rule: 65 Fed. Reg. 14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000) • Eighteen-Month Publication - Final Rule: 65 Fed. Reg. 57023 (Sept. 20, 2000),1239 Off. Gaz. Pat. Office 63 (Oct. 10, 2000) • Inter Partes Reexamination - Final rule: 65 Fed. Reg. 76755 (Dec. 7, 2000), 1242 Off. Gaz. Pat. Office 12 (Jan. 2, 2001)

3. Patent Business Goals – Final Rule Patent Business Goals - Final Rule 65 Fed. Reg. 54603 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77 (Sept. 19, 2000)

4. Recent Notices to Patent Practice and Procedure - Miscellaneous Miscellaneous: • Time Period for Paying Publication Fee if a Request for Continued Examination is Filed After a Notice of Allowance, 1249 Off. Gaz. Pat. Office 83 (August 21, 2001) • Helpful Hints Regarding Publication of Patent Applications, 1249 Off. Gaz. Pat. Office 83 (August 21, 2001) • Interim Practice of Mailing a Notice of Publication Fee Due Separate From the Notice of Allowance, 1248 Off. Gaz. Pat. Office 166 July 31, 2001) • Elimination of Continued Prosecution Application Practice as to Utility and Plant Patent Applications - Proposed Rulemaking 66 Fed. Reg. 35763 (July 9, 2001) • Changes to the Time Period for Making any Necessary Deposit of Biological Material, 1246 Off. Gaz. Pat. Office 104 (May 22, 2001), • Examination Guidelines for 35 U.S.C. § 102(e), as amended by the AIPA of 1999, 1243 Off. Gaz. Pat. Office 1037 (February 27, 2001) • Drawings in Patent Application Publications and Patents, 1242 Off. Gaz. Pat. Office 114 (January 16, 2001).

5. Recent Notices to Patent Practice and Procedure - Miscellaneous • Confirmation Numbers & Electronic Filing System(EFS) for PG Pub, 1241 Off. Gaz. Pat. Office 97 (December 26, 2000) • 35 U.S.C. § 103(c) Guidelines - Modified Policy 1241 Off. Gaz. Pat. Office 96 (December 26, 2000) • Treatment of Unlocatable Patent Files - Final Rule: 65 Fed. Reg. 69446 (Nov. 17, 2000),1241 Off. Gaz. Pat. Office 36 (Dec. 12, 2000) • PTO Now accepts Credit Cards for Patent and Trademark Fees - Final Rule: 65 Fed. Reg. 33452 (May 24, 2000),1235 Off. Gaz. Pat. Office 38 (June13, 2000) PTO form PTO-2038

6. Training and Outreach for AIPA and PBG - Final Rules AIPAWebpage

7. AIPAWebpage Current Patent Statute (35 U.S.C.) Current Patent Rules (37 CFR)

8. Training Materials • AIPA/PBG training and implementation materials now available for purchase in paper notebook or CD-ROM format (free on website) • to order, call Meg Gilbert at the Office of Electronic Information Products (OEIP) (703) 306-2622 • New edition of MPEP now available • Extensive listing of Qs and As on AIPA and PBG-FR web pages

9. Practice Tips on Patent Office Practice Mark O. Polutta Legal Advisor Prepared 2/03/02

10. Check the USPTO web site for important announcements Announcements re Mail Problems:

11. Background: Notices Related to Mail Problems • On September 11, 2001, the USPTO was closed in view of the emergency situation. Any replies due that day were timely filed on the next business day. SeeEmergency Closure - September 11, 2001, http://www.uspto.gov/september11/emergencyclosure01.htmw. • On October 23, 2001, the USPTO posted a notice concerning the safety of USPTO mail. The Notice stated that trademark mail did not pass through the Brentwood mail facility, but that the patent mail that was routed through Brentwood was considered safe. See http://www.uspto.gov/web/offices/com/sol/og/2001/week45/patsafe.htm • On Nov. 2, 2001, the USPTO posted a notice encouraging patent practitioners to fax correspondence to the Office. SeePatent Customers Advised to FAX Communications to USPTO http://www.uspto.gov/september11/faxnotice.htm

12. Background: Notices Related to Mail Problems (cont’d) • On November 8, 2001, the Office posted a notice stating that mail delivery to the USPTO since 10/21 had been interrupted, and reminded applicants of the benefits of certificates of mailing under 37 CFR 1.8 and Express Mail under 37 CFR 1.10, and repeated the encouragement to fax replies. SeeMitigation of Delays in Mail Deliveries to the USPTO (Nov. 8, 2001), http://www.uspto.gov/september11/mitigationofmaildelays.htm. Suggested Action: Use FAX where possible.

13. Background: Notices Related to Mail Problems(cont’d) • On November 16, 2001, the Chief Operating Officer and Executive Vice President of the USPS issued a memorandum suspending Express Mail service to the USPTO zip code for most patent mail 20231, among others. As a result, many patent applications were returned as undeliverable. SeeSuspension of the "Express Mail" Service of United States Postal Service for mail addressed to ZIP Codes 202xx through 205xx, 1253 Off. Gaz. Pat. Office 103 (December 25, 2001). This notice established a new address for Patent Mail: U.S. Patent and Trademark Office, P.O. Box 2327, Arlington, VA 22202 • On November 29, 2001, this suspension was lifted. SeeTermination of the Suspension of the "Express Mail" Service of United States Postal Service for mail addressed to ZIP Codes 202xx through 205xx, http://www.uspto.gov/september11/termsusp.html (Dec. 5, 2001). The USPTO continues to receive isolated reports of individual Post Offices refusing to accept Express Mail to the 20231 zip code, but mail is now being received in a timely manner when addressed to the new Arlington VA 22202 address as well as the existing Washington DC 20231 address.

14. Current Status of Mail Deliveries to the Office and Suggestions for Applicants • Many applications and other correspondence still have not been received. SeeProcessing of, and Requirements for, the Filing of Duplicate Applications and Papers in Patent Applications in view of USPS Mail Delays, http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/maildelays.htm (12/20/01) Before filing a duplicate, check to see if the original reply has been received. PAIR is a good source, but does not have a record of Pre-Examination and certain other papers. NOTE that correspondence will be considered timely filed if the certificate of mailing date was timely, even if it it delayed in the mail. Furthermore, an application mailed by Express Mail will be given a filing date of the “date in” accorded by the USPS, regardless of when the Office actually receives the application.

15. Current Status of Mail Deliveries to the Office and Suggestions for Applicants Any duplicate must, pursuant to 37 CFR 1.8: (1) be a copy of the previously mailed reply (or other paper) and certificate of mailing of the previously mailed reply (the certificate of mailing must be signed and the certificate of mailing must itself indicate the date of mailing); and (2) be accompanied by a statement that the reply was previously mailed to the USPTO on the date indicated on the certificate of mailing.

16. Current Status of Mail Deliveries to the Office and Suggestions for Applicants • When should a duplicate reply be filed? • If rights will be lost due to the mail delays, or if the delays in processing the paper will cause difficulties (e.g., a very short period of time to obtain a certified copy of a priority document). • If the delayed correspondence includes a preliminary amendment or a reply to an Office action or a Notice of Allowance and the reply was filed in October, but not yet received by the Office, consider filing a duplicate copy of the reply. • If the delayed correspondence includes a patent application that was mailed by Express Mail, or a response to a pre-exam notice other than a Notice of Omitted Items, wait for at least a month for the Office to receive the mail. If the delayed correspondence includes a preliminary amendment or a reply to an Office action or a Notice of Allowance and the reply was filed in October, but not yet received by the Office, consider filing a duplicate copy of the reply. • The Office will consider a reference to the mail delay as a showing that the delay was “in spite of due care” for purposes of patent term adjustment and will waive the fee for such a showing.

17. Current Status of Mail Deliveries to the Office and Suggestions for Applicants • Applicants are encouraged to pay the issue fee by fax. The fax number is: (703) 746-4000. Drawings are now permitted to be faxed, when faxed with payment of the issue fee. SeePayment of the Issue Fee and Filing Related Correspondence by Facsimile, http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/feefacsimile.htm(12/19/01) Due to the drop in receipt of issue fees, the number of patents has dropped from an Issue size of 3,400 on 12/4 and 12/11/01, to 1,821 patents issued on 12/18, 2,256, on 12/25, and 2,188 on 1/1/02. • Mail problems have resulted in some applications that were filed in October being given a more recent application number than other applications filed in December. SeeAnnouncement of the New "10" Series for Patent Applications, http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/10series.htm (12/31/01) • Irradiation has damaged some papers.

18. Current Status of Mail Deliveries to the Office and Suggestions for Applicants 11. Sequence Listings should be submitted to the Office in one of the following four ways (instead of being mailed to the 20231 zip code): • Submitted electronically through EFS-Bio (http://www.uspto.gov/ebc/efs/downloads/documents.htm, EFS Submission User Manual - ePAVE).uspto.gov/ • Mailed by Express Mail or First Class mail, as appropriate to: U.S. Patent and Trademark Office Box Sequence, P.O. Box 2327 Arlington, VA 22202 • Mailed by Federal Express, United Parcel Service or other delivery service to: U. S. Patent and Trademark Office 2011 South Clark Place Customer Window, Box Sequence Crystal Plaza Two, Lobby, Room 1B03 Arlington, Virginia 22202; or • Hand Carried directly to the Customer Window at: 2011 South Clark Place Crystal Plaza Two, Lobby, Room 1B03, Box Sequence, Arlington, Virginia 22202

19. Impact Number of pieces of Mail Received

20. Issue Fees received in the Office of Patent Publication

21. Facsimiles received by TC

22. Details about Publication of Applications Mark O. Polutta Legal Advisor, Office of Patent Legal Administration (703) 308-8122 mark.polutta@uspto.gov Prepared 1/31/02

23. USPTO handling - Publication Content for Eighteen-Month Publication • Publication process: • Application is generally published as originally filed • Patent application publication will be similar to a patent in format and content • front page with title, bibliographic data, abstract, drawing figure, and IPC/US classifications • specification (including claims) in a two column arrangement • no Official Gazette for patent application publications

24. Special Requests for Publication • AIPA provides, at the applicant’s request, for publication • of an application pending on November 29, 2000 (voluntary publication) • of an application earlier than at eighteen months from the earliest filing date claimed under title 35 (early publication) • of only the part of an application that has been published abroad application as redacted, for applications including disclosure previously published abroad (redacted publication) • of an application previously published (republication)

25. Published patent applications are available on the USPTO web site Patent application publications can be searched in a number of ways. See http://www.uspto.gov/patft/index.html

26. Application Publications look a lot like patents.

27. USPTO handling - Publication Content for Eighteen-Month Publication (cont’d) • Drawing issues: • If drawings are “acceptable,” applicant may submit better quality drawings for publication: • with an EFS copy of the application, or • with a petition under 37 CFR 1.182 (and $130 fee) within the later of fourteen months from the earliest claimed priority date or one month from the actual filing date of the application • submit to Box PGPUB Drawings • SeeDrawings in Patent Application Publications and Patents, 1242 Off. Gaz. Pat. Office 114 (Jan. 16, 2001)

28. USPTO handling - Publication Content for Eighteen-Month Publication (cont’d) • Office presumes Assignee information provided on the application transmittal letter or an Application Data Sheet was intended to be included on the cover page of the patent application publication (37 CFR 1.215(b)) • Assignee information will be included on filing receipt, if entered into PALM for printing on publication • Assignee information can be submitted through private PAIR (http://pair-direct.uspto.gov), if a projected publication date (PPD) has been assigned to the application

29. USPTO handling - Publication Content for Eighteen-Month Publication (cont’d) • The applicant must file a copy of the application in compliance with the Electronic Filing System (EFS): • for publication of an application as amended • includes amendment(s) occurring prior to filing of a CPA application • for “voluntary” publication of an application pending on November 29, 2000 • for publication of an application as redacted • for republication of an application

30. USPTO handling - Publication Content for Eighteen-Month Publication (cont’d) Since a confirmation number (shown on the filing receipt) is needed to file an EFS copy, the period of time for making an EFS submission is at least one month of the mail date of the first Filing Receipt indicating the application’s confirmation number • SeeAssignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 Off. Gaz. Pat. Office 97 (Dec. 26, 2000)

31. USPTO Handling - Up-Front Review for Eighteen-Month Publication • USPTO now requires that each utility and plant application be in condition for publication before release to TC for examination • basic filing fee and an executed oath/declaration req’d • specification of sufficient quality for optical character recognition (OCR) conversion of image to text • title and abstract in compliance with 37 CFR 1.72 • drawings acceptable for use in the patent application publication as a prior art document • drawings may be “acceptable” even if designated as “informal” by the applicant • sequence listing Computer Readable Format (CRF) in compliance with 37 CFR 1.821 et seq.

32. Timing of Eighteen-Month Publication • 35 U.S.C. § 122(b) requires publication of applications at eighteen months from the earliest filing date claimed under title 35 • eighteen-month date measured from the earliest filing date claimed under 35 U.S.C. §§ 119, 120, 121, or 365 • the projected publication date will be the later of 18 months from the earliest filing date or 14 weeks from the mailing date of a filing receipt, once the application is ready to be published.

33. Look at Filing Receipt for Projected Publication Date If the filing receipt is for a CPA, it will show the date the CPA was filed in this part of the filing receipt. The Projected publication date will be included on the filing receipt.

34. Timing of Eighteen-Month Publication • Office problem (§ 119(e)): PALM did not originally take into account priority claims under § 119 (e) in calculating the projected publication date (PPD) communicated on filing receipts or in PAIR • Corrected PPD (based on provisional filing dates) will be provided, if the date is changed by more than six weeks. The notice of this new PPD is being mailed shortly before the PPD. If you know that the PPD is wrong because of this problem- don’t wait for the USPTO to tell you that the PPD has changed to file better quality drawings, abandon the application, etc.

35. Timing of Eighteen-Month Publication • Priority/Benefit claims must be made within later of four months of the filing date of the application, or sixteen months of the filing date of the priority application. See 37 CFR 1.55(a)(1) and 1.78(a)(2) and (5). • Reference to prior application in transmittal letter or declaration will meet timing requirement if information included on filing receipt, even if the claim does not meet the requirements of 35 U.S.C. 120. • Late priority/benefit claim can be accepted during pendency of the patent application, but the surcharge is currently $1,280, with NO small entity discount. See 37 CFR 1.55(c)(1) and 37 CFR 1.78(a)(3) and (5).

36. Timing of Eighteen-Month Publication (cont’d) • Applies to applications filed on or after November 29, 2000 • A CPA filed on/after November 29, 2000 is subject to publication • Office problems (CPAs): • Export of image data from Office records of parent application is a problem for some CPAs and has delayed publication • Mailing of filing receipts for CPAs processed in the TC to indicate a projected publication date has been a problem. Processing of these CPAs is being re-done. • Applicants are caught by surprise by notices of publication fee due in CPAs

37. Timing of Eighteen-Month Publication (cont’d) • Applies to applications filed on or after November 29, 2000 • Filing an RCE on/after November 29, 2000 in an application filed before November 29, 2000 does not make the application subject to publication • Office problems (RCE): • Some applications filed prior to November 29, 2000 have been inadvertently scheduled for publication following the submission of an RCE • Applicants should call the Customer Service Center of the TC if an application is scheduled for publication in error (viewable in the private side of the Patent Application Information Retrieval System (PAIR))

38. USPTO processing - Publication Fee ($300.00) • Cost of publication required by 35 U.S.C. § 122(b) is recovered by charging a publication fee after the notice of allowance is mailed • If application does not receive a notice of allowance, no publication fee needed • Publication fee is required, if publication is scheduled to occur within one month before or after patent issue date • The publication fee notice is intended to be included with the Notice of Allowance • Office Problem: Notice of Allowance did not include any Publication fee until November, 2001 • Batch mailing of publication fee notices were mailed (shortly) after mailing of notices of allowances

39. Sample of Interim Notice of Publication Fee Due Unless the application has been published early or voluntarily (i.e., an application filed before 11/29/00 is published), the publication fee is charged once the application is allowed.

40. New Notice of Allowance and Fee(s) Due Form This new version of the Notice of Allowance (PTOL-85) started to be mailed in all applications beginning in mid-November, 2001. A publication Fee will be included if a publication fee is required.

41. New Notice of Allowance and Fee(s) Due Form (cont’d) This is the second page of the new Notice of Allowance (the PTOL-85B). A publication Fee will be included if a publication fee is required.

42. In order to avoid publication, a non-publication request must be made on filing. Non Publication Request Form PTO/SB/35 See forms posted at http://www.uspto.gov/web/forms/index.html

43. If the application is later filed where publication is required, the application will become abandoned 45 days later unless notice of foreign filing is provided. Use the Request to Rescind Nonpublication Request form. PTO/SB/36 See forms posted at http://www.uspto.gov/web/forms/index.html Please only file a request to rescind where you actually made a nonpublication request

44. How to Avoid Publication – after Filing • § 1.138(c) petition for express abandonment to avoid publication • file petition and $130.00 petition fee at least four weeks before projected publication date • petition will be granted when it is recognized in sufficient time to avoid publication • if petition is denied, application NOT abandoned • We strongly urge these petitions be mailed to: • Box PGPUB – ABN or faxed to (703) 305-8568 • file a continuation application under 37 CFR 1.53(b) with a request for nonpublication (form PTO/SB/35); and • § 1.138(a) - While no fee is due, if petition not timely recognized, not only will publication occur but essentially a non revive-able abandonment will occur

45. How to Avoid Publication – after Filing (cont’d) • To avoid publication of an application filed on or after 11/29/00 filed without a request for non-publication an applicant, may: • 1st) file a petition to convert the non-provisional application to a provisional application (1.53(c)(2)) • 2nd) file a (second) non-provisional application with a non-publication request claiming benefit of the prior provisional application under 35 U.S.C. 119(e) • Both steps must occur within 12 months of first filing • Patent Term not affected (compare to abandonment in favor of continuing application) • Possible Problems • provisional application (even if the result of a conversion) cannot claim benefit of a prior application

46. 37 CFR 1.76 - Application Data Sheet (ADS) • Provides for sheet(s) containing bibliographic and other application information in a specified format • ADS may include 1) applicant, 2) correspondence address, 3) representative, 4) domestic priority claim(s), 5) foreign priority claim(s), 6) assignee information for publication, 7) classification, and 8) representative fig. • Certain information, if on ADS, does not have to be on oath or declaration. Thus, supplemental oath/dec can be avoided. • May be used to correct a prior oath/dec. • Capturing of information should be more accurate if ADS used. With eighteen-month publication this becomes more important. • for more information: Kery Fries (703) 308-0687 - Kery.Fries@uspto.gov

47. Accessto File History • Access: • Applications are no longer maintained in confidence once they are published • USPTO will not provide direct physical access to a pending published application (see 37 CFR 1.14(c)(2)) • USPTO will provide (for a fee) a copy of the file wrapper and content of a published application • The fee is $200 for the first 400 pages and $40 for each additional 100 pages • To obtain a copy of the file, Contact the Office of Public Records at https://www3.uspto.gov/oems25p/index.html, or (703) 305-8579 • To obtain the file in FIU, the application must be abandoned. • To view computer records - See the PAIR -next 2 slides

48. Access to File History Applications that have been published are only available in the FIU if they are abandoned. Otherwise, the public must obtain a copy through Certification Division.

49. Access to File History Hint: Before you request a copy of the whole file wrapper, check the contents of the application in PAIR to see if there are papers other than the application as originally filed. You can pay for a single paper, rather than the entire file.

50. Access to File History Hint: Rather than contact the File Information Unit to request status (continuity data) information - Look it up in PAIR.