Welcome to EFS-Web Indexing Training

1. Welcome to EFS-Web Indexing Training USPTO’s new web-based patent application and document submission solution

2. Today’s Training Agenda • Important Metrics • EFS-Web Overview • Indexing • What is Indexing? • Why Index? • Common Submissions • Provisional, Utility, Design and Reissue Application • 371 National Stage and PCT Application • Request for Reexamination • Pre-Grant Publication • Amendment • Information Disclosure Statement • Accelerated Examination • Document Indexing Tips • Common Indexing Questions • Priority Document Exchange • Indexing Resources United States Patent and Trademark Office

3. Important Metrics • About 10% of all submissions received contain errors • Approximately 40% of those errors involve using the wrong document description • 25% of the errors involve separating distinct documents • Improper use of a Transmittal Letter and Miscellaneous Incoming Letter document descriptions are the most common errors United States Patent and Trademark Office

4. EFS-Web Overview USPTO’s new web-based patent application and document submission solution

5. Overview Information What Can Be Filed? • New Applications • Provisional, Utility, Utility Reissue, 371 National Stage, Design Reissue and Design with Color Drawings. • International applications for filing in the U.S. Receiving Office • Proceedings • Reexamination • Existing Applications • Follow-on correspondence • Accelerated Examination • Pre-Grant publications under 37 CFR 1.211 – 1.221 • Petition to Accept Unintentionally Delayed Payment of Maintenance Fees in an Expired Patent (37 CFR 1.378(c)) • Request for Continued Examination (RCE) United States Patent and Trademark Office

6. OverviewWhat Can Be Filed? • Document Description List • An e-Filer can select from document descriptions that are applicable to their particular submission • Numerous Fees • Most fees contained in the complete Patent Fee Schedule may be paid via EFS-Web United States Patent and Trademark Office

7. What Cannot be Filed Using EFS-Web 1.1.4? • Credit Card Authorization Form - PTO-2038 • Assignments • Maintenance Fees • New Plant Applications or Color Plant Drawings • Documents related to Registration Practice & Disciplinary Proceedings • Certified Copies (Ribbon Copies) • Secrecy Order Applications and/or Documents • Contested Cases at the Board of Appeals and Interferences • Third party papers under 37 CFR 1.99 • Protests under 37 CFR 1.291 • Public use hearing papers under 37 CFR 1.292 United States Patent and Trademark Office

8. EFS-Web Indexing USPTO’s new web-based patent application and document submission solution

9. Indexing of EFS-Web Submission Indexing • Indexing is applying a document description to a PDF or TXT File • Page ranges must be specified if multi-document selection is made in a PDF File • All files or the documents in a multi-document PDF File must be indexed • Nearly 200 document indexing descriptions are offered, however, the particular filing submission may reduce the number of available descriptions. • Categories are used to assist users in finding the correct indexing description • By choosing a category, the number of available document descriptions may be reduced even more. • All indexing is checked by USPTO personnel • Indexing has no legal relationship to the patent application, indexing is an administrative act for processing the submission United States Patent and Trademark Office

10. Indexing of EFS-Web Submission • Why index? • Allows for quicker and more accurate downstream processing of your submission – Documents are instantly routed to the Image File Wrapper – Incorrectly indexed documents may result in a delay in the documents being properly routed to appropriate USPTO personnel – Generates smoother work flow and assigns the submission to USPTO personnel to be acted upon United States Patent and Trademark Office

11. Common Filing Submissions USPTO’s new web-based patent application and document submission solution

12. New Utility Application Filing • Specification, Claims, and any necessary Drawings are required to be accorded a filing date • All of these descriptions can be found under the Category “Application Part” • Please note that an abstract is required for the application to be complete, but is not required for an application to be accorded a filing date • Oath or Declaration and Abstract are required for Application to be considered complete • These descriptions are located under Category “Application Part” • A combined Oath or Declaration and Power of Attorney should be indexed as “Oath or Declaration Filed” • Surcharge for Oath/Declaration not filed with the original submission is $130 • Application Data Sheet (ADS) • Recommended – description is also located under the Category “Application Part” • e-filing ADS located at http://www.uspto.gov/ebc/portal/forms.htm • Requires Adobe Reader 7.0.8 or 7.0.9 United States Patent and Trademark Office

13. 371 National Stage Application Filing • When filing a 371 National Stage Application, always break out application parts into Specification, Claims, Abstract, etc. • When submitting PCT documents with 371 National Stage Application: • Use Category “Documents submitted with 371 Applications” • International Search Reports being submitted should be indexed as: • Use Category“Documents submitted with 371 Applications” • If the Search Report is used as prior art, index it as “NPL Document” • Translations should be broken into application parts (e.g., Specification, Claims, Abstract, etc.) United States Patent and Trademark Office

14. PCT Application Filing • Index the RO/101 Request form as “RO/101 – Request form for new IA – Conventional” or “RO/101 Request form for new IA – PCT Safe format” when using PCT-SAFE in PCT-EASY mode • Index Application Parts as “Specification”, “Claims”, “Drawings”, etc. • Located under Category “PCT – Application Part” • If attaching a Transmittal Letter, use “PCT – Transmittal Letter” under Category “PCT – General Transmittal” • For miscellaneous communication, use “Misc. Incoming Letter from Applicant – IA” under Category “PCT – General Transmittal” • Use “CHII - Misc. communication from Applicant -IA” for Chapter II communication • If attaching PCT-SAFE Zip file, also need to attach the specification, claims, abstract, drawings, etc., as PDF files. • Please do not add these documents to the PCT-SAFE Zip file, as EFS-Web will not extract them for processing. United States Patent and Trademark Office

15. Pre-Grant Publication Filing • Pre-Grant Publication Requests except for requests for corrected publication can not be submitted as a follow-on paper • Choose the Pre-Grant Publication Request filing type from the initial screen in EFS-Web to make pre-grant publication submission • Attach the Application Parts: Specification, Claims, Abstract, Drawings, and ADS for submissions pursuant to 37 CFR 1.215 and 37 CFR 1.221 • Must use the e-fillable ADS in its original format (cannot be scanned in) • Any related Amendments must be filed as a follow-on in a separate submission before the Pre-Grant Publication Request United States Patent and Trademark Office

16. Remarks Claims Amendment Amendment Filing • The first document filed should be indexed so as to indicate the type of Amendment – e.g.“After Non-Final Rejection”, “After Final”,etc. • Would also include Transmittal, Explanation of Amendment • Located under Category “Amendment” • Followed by Amended document(s) – e.g. “Specification”, “Claims”, “Drawings”, etc. • Found under Category “Amendment” or “Application Part” • Includes annotated version of amended document • “Applicant Arguments / Remarks Made in an Amendment” • Located under Category “Amendment” • When to use “Amendment Copy Claims/Response to Suggested Claims” • This document description should only be used for the Transmittal document, not for the Claims themselves United States Patent and Trademark Office

17. Information Disclosure Statement (IDS) Filing • Transmittal letters submitted with IDS form should be indexed as “Information Disclosure Statement letter.” • Index the form as “Information Disclosure Statement (IDS) Filed” under the “IDS/References” Category • E-IDS located at http://www.uspto.gov/ebc/portal/forms.htm • Requires Adobe Reader 7.0.8 or 7.0.9 • Use “Foreign Reference” when submitting foreign applications/patents published by a non-US patent authority • In addition to listing them in the IDS United States Patent and Trademark Office

18. Information Disclosure Statement (IDS) Filing • Use “NPL Documents” for indicating non-patent literature such as articles, magazines, etc. • In addition to listing them in the IDS • Related US applications (i.e., pending, non-patented, non-published) should be attached separately or bundled using the “multi-doc” option • Do not attach published US application/patent references United States Patent and Trademark Office

19. Accelerated Examination Filing • How do I file a Petition to Make Special Under the Accelerated Examination Program? • Request must be made via EFS-Web, with respect to an application filed under 35 USC 111(a) and complete application complying with 37 CFR 1.51. • To submit an Accelerated examination application as a follow-on, applicant must file: • Transmittal Amendment/Reply Accelerated Exam, indexed as “Accelerated Exam-Transmittal amendment/reply”, under Category “General Transmittal” United States Patent and Trademark Office

20. Accelerated Examination Filing • To qualify for the accelerated examination program, applicant must file: • Accelerated Examination Form SB/28, indexed as “Petition for 12-month Accelerated Exam”, under Category “Petition” • Examination Support Documents, indexed as “Examination support document”, under Category “Petition” • Statement of Pre-Examination Search, indexed as “Statement of pre-examination search”, under Category “Petition” • Standard documents for patent or design application required • Specification, claims, abstract, oath/declaration, transmittal & IDS United States Patent and Trademark Office

21. Document Indexing Tips USPTO’s new web-based patent application and document submission solution

22. Transmittal • “Transmittal of New Application” under Category “General Transmittal” • To be used with new U.S. Application submissions only • For use with the Provisional Cover Sheet (required) • Follow-on documents should be submitted as the type of document being submitted (i.e. Amendment, IDS, etc.) • “PCT-Transmittal Letter” • Use this instead of “Transmittal Letter” for PCT Applications • Found under Category “PCT – General Transmittal” United States Patent and Trademark Office

23. Text Files • “Computer Listing”, “Sequence Listing (Text File)”, and “Table in text format” • Text files are for these document descriptions only • Use “Sequence Listing” for image copy of sequence listing • Table TXT files should be a minimum of 50 pages • If your table TXT file is less than 50 pages, submit the image copy as part of the Specification • TXT files take approximately two days to show up in Private PAIR under the “Supplemental Content” tab United States Patent and Trademark Office

24. Sequence Listings • Sequence Listings – New Application • Only the text file (CRF/TXT) needs to be submitted • Use “Sequence Listing (Text File)” under Category “Application Part” • If submitting the image copy in PDF format, make sure to also include the statement indicating that the image copy and the CRF/TXT are the same • Index the image copy as “Sequence Listing” • Index the statement as “CRF Statement Paper and CRF are the same” • Appendix should be in PDF format, not TXT United States Patent and Trademark Office

25. Continuation Applications • Continuation, Continuation-in-part (CIP), and Divisional Application – Each one must be filed as a New Application • Same indexing requirements as a new application – “Specification”, “Claims”, “Drawings”, etc. • Differences in document content • Indicate domestic priority of parent application on ADS or the first line of the specification • Indicate continuity type on first line of the specification • CPA – Continued Prosecution Application • Not to be confused with CIP • Inapplicable to utility and plant applications filed on or after May 29, 2000 • CPA practice is still applicable for Design Applications • Comparison chart of CPA vs. RCE practice: http://www.uspto.gov/web/offices/dcom/olia/aipa/comparison_of_cpa_practice.htm United States Patent and Trademark Office

26. Common Indexing Questions USPTO’s new web-based patent application and document submission solution

27. How do I Index? • How do I index: • A Request to Reset the Time Period for Reply due to Error(s) in the Office Action pursuant to MPEP 710.06: • Index as “Petition for review by Technology Center SPRE” • A Response to a Request for Rehearing by the Examiner: • Index as “Reply Brief filed” • A communication meant to prove a document was mailed to the USPTO, e.g., if relying on a post card receipt as prima facie evidence that the document was filed as of the date on the post card receipt? • Index as “Petition for review by Office of Petitions” (In this case, it is a petition under 37 CFR 1.181.) United States Patent and Trademark Office

28. How do I Index? • How do I index: • A Reconsideration of Patent Term Adjustment: • Index as “Petition for Review by Office of Petitions” • A Change of Address for an International Application filed in the US Receiving Office (PCT): • Index as “Request for Recording of a Change/PCT Rule 92bis”, under Category “PCT-Change Request” United States Patent and Trademark Office

29. How do I index? • How do I index: • Power of Attorney with a new (or existing) Application filing: • Index as “Power of Attorney” under the “Change Requests” Category • If Power of Attorney is combined with Oath, index as “Oath or Declaration Filed” Category “Application Part” • Pre-Brief Conference Request to be sent to the Examiner or the BPAI: • Index as “Pre-Brief Conference Request” under the “BPAI” Category • A Request for Entity Status Change: • Index as “Miscellaneous Incoming Letter” • A Response to an Examiner's Rejection without an Amendment: • Index as “Applicant Arguments or Remarks Made in an Amendment” United States Patent and Trademark Office

30. Terminal Disclaimer • Do I need to submit the Terminal Disclaimer form? • The Terminal Disclaimer form or letter must be submitted along with the Terminal Disclaimer Fee • Where is the Terminal Disclaimer Fee located? • On the “Calculate Fees” page, under the “Post Allowance and Post Issuance Fees” section • Labeled as “Statutory disclaimer” fee United States Patent and Trademark Office

31. Appeal • What is the difference between Appeal Brief and Notice of Appeal? • Notice of Appeal is addressed in 37 CFR 41.31. • It is Indexed as “Notice of Appeal Filed”, under Category “BPAI” • Appeal Briefs are addressed in 37 CFR 41.37. • It is Indexed as “Appeal Brief Filed”, under Category “BPAI” • Generally, an appellant may file a notice of appeal once his/her claims have been twice rejected. The Notice of Appeal must be filed within the time period provided under 37 CFR 1.134. • Once the Notice of Appeal is filed, the appellant has two months to file the actual Appeal Brief, which includes the appellant's arguments, etc. • Requesting a Pre-Appeal Brief Conference • Must be filed at the time of filing the Notice of Appeal • Index as “Pre-Brief Conference Request”, under the Category of “BPAI” United States Patent and Trademark Office

32. Categories • Do Categories affect indexing, backend processing, or handling of the documents? • No, they are provided simply for filtering the document description choices United States Patent and Trademark Office

33. General Tips • Extensions of Time • Must attach the appropriate form/letter in addition to paying the fees • Index as “Extension of Time” under Category “General Transmittal” • Issue Fee Payments • Must attach the appropriate form/letter in addition to paying the fees • Index as “Issue Fee Payment Recorded (PTO-85B)” under Category “General Transmittal” • Response to the Notice to File Missing Parts • A copy of the Notice is not required if filing through EFS-Web • Index as “Applicant Response to Pre-Exam Formalities Notice” United States Patent and Trademark Office

34. Priority Document Exchange(PDX) USPTO’s new web-based patent application and document submission solution

35. Priority Document Exchange • What is ‘Priority Document Exchange’? • Provides for the direct office-to-office electronic transmission of priority documents between participating Intellectual Property Offices • Priority Document Exchange with EPO (European Patent Office) began January 16, 2007 • Priority Document Exchange with JPO (Japan Patent Office) began July 28, 2007 • Free – No fees required United States Patent and Trademark Office

36. Retrieving EPO/JPO Priority Documents by the USPTO • The USPTO will automatically request retrieval of Priority Documents if a newly filed U.S. application claims priority to one or more EPO or JPO applications in the Oath, Declaration, or Application Data Sheet • Express written instruction is not required in this situation • Written instruction (e.g., Form PTO/SB 38) is required to request retrieval of: • EPO Priority Document(s) for a U.S. application filed prior to June 4, 2007. • Non-EPO (e.g., French) Priority Document that is of record in an EPO application • JPO Priority Document(s) for a U.S. application filed prior to July 28, 2007. • NOTE: PDX cannot be used to retrieve non-JPO (e.g., Korean) Priority Documents that are of record in a JPO application United States Patent and Trademark Office

37. Retrieving EPO/JPO Priority Documents by the USPTO (con’t) • Form and instructions are available athttp://www.uspto.gov/web/forms/sb0038.pdf • ‘Request for USPTO to retrieve priority documents’ under category “Priority Documents” in EFS-Web • Monitor Private PAIR to determine whether priority documents have been successfully retrieved • Status of retrieval will be indicated in Examiner’s Office action • PTOL-326 (Office Action Summary), item 12 • PTOL-37 (Notice of Allowability), item 3 • NOTE: Requests filed after mailing of Notice of Allowability will be processed but timely retrieval (37 CFR 1.55(a)(2)) cannot be guaranteed. United States Patent and Trademark Office

38. Releasing USPTO Priority Documents to the EPO/JPO • Priority Documents will be provided to the EPO or JPO only if one of the following criteria is met. • The U.S. application is published or patented; • The applicant submitted written authorization (Form PTO/SB/39) to transmit the Priority Document to the EPO/JPO, and the U.S. application has cleared national security review • Form and instructions are available athttp://www.uspto.gov/web/forms/sb0039.pdf • Index as “Authorization to Access application by trilateral office” in EFS-Web • Check the EPO (http://www.epo.org) and JPO (http://www.jpo.go.jp) web sites for information on their practices United States Patent and Trademark Office

39. How to submit PDX Request • Request can be made at time of filing or as a follow-on document • Request can be submitted • electronically • faxed to the Central Fax number (571-273-8300) • mailed to: Commissioner of Patents P.O. Box 1450 Alexandria VA 22313-1450 United States Patent and Trademark Office

40. Indexing Help • Complete, sort-able List of Document Descriptions: http://www.uspto.gov/ebc/portal/infodocuments.htm • Help page “How to Index my Documents”: http://www.uspto.gov/ebc/portal/efs/rules_doc_codes.htm United States Patent and Trademark Office

41. Indexing Tutorials • Available at http://www.uspto.gov/ebc/portal/tutorials.htm • Covers this presentation’s indexing scenarios in detail • Accelerated Examination Tutorial – available at http://www.uspto.gov/web/patents/accelerated/ • PCT Tutorial http://www.uspto.gov/ebc/portal/efs/dct_pct_file_new_tutorial.pdf • Request to Update a PCT Application With a Customer Number Tutorial http://www.uspto.gov/ebc/documents/assoc_pct_with_cust_number.pdf United States Patent and Trademark Office

42. Electronic Business Center (EBC) If you have questions or need technical assistance please contact our: Electronic Business Center (EBC) Monday – Friday (6am – Midnight EST) Phone: 1-866-217-9197 / 571-272-4100 * Select option 2 Fax: 571-273-0177 Email: EBC@uspto.gov United States Patent and Trademark Office

43. Additional Resources • Inventor’s Assistance Center (IAC) • Questions on patent rules, practices, and procedures • Call 800-PTO-9199 (800-786-9199) or 571-272-1000 • Available Monday – Friday 8:30 AM – 5:30 PM (EST) • http://www.uspto.gov/web/offices/pac/dapp/pacmain.html • PCT Helpdesk • Questions related to PCT filings – rules, practices, procedures • Call 571-272-4300 • Available Monday – Friday 9:00 AM – 4:30 PM (EST) United States Patent and Trademark Office

44. Additional Resources • Office of Initial Patent Examination (OIPE) • 571-272-4000 • Assignment Division • 571-272-3350 • Office of Petitions • 571-272-3282 • Publishing Division • 571-272-4200 or 888-786-0101 United States Patent and Trademark Office

45. USPTO Support Electronic Filing QuestionsBusiness Center 1-866-217-9197Appeals/Interferences Board of Patent Appeals and Interferences 571-272-9797 Publications Office of Publications 1888-786-0101 Pre-grant Publications703-605-4283 Registration Practices Office of Enrollment and Discipline 571-272-4097 Application Status (pre-examination) Office of Initial Patent Examination 571-272-4000 ReexaminationsCentral Reexamination Unit 571-272-7705 General Questions 571-272-7705 Reexamination Pre-Processing 571-272-7705 Reissues See Appropriate Patent Technology Center Patent Process Inquiries Inventors Assistance Center 1800-786-9199 Assignments Electronic Patent Assignment System epas@uspto.gov Assignments division 571-272-3350 Finance Office of Finance 571-212-6400 Maintenance Fees / Deposit Accounts 571-272-6500 International Filing PCT Helpdesk 571-272-4300 Legal Patent Legal Administration 571-272-7700 CopiesOffice of Public Records 1-888-786-0101Petitions Office of Petitions 571-272-3282 United States Patent and Trademark Office

46. Thank you for attending USPTO’s new web-based patent application and document submission solution