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AIPLA Biotech Committee Meeting Washington D.C., October 14, 2004

AIPLA Biotech Committee Meeting Washington D.C., October 14, 2004. Anthony Caputa, Ph.D. Technology Center Practice Specialist 571-272-0829 TC 1600. How Applicant can use the TPS or QAS.

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AIPLA Biotech Committee Meeting Washington D.C., October 14, 2004

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  1. AIPLA Biotech Committee MeetingWashington D.C., October 14, 2004 Anthony Caputa, Ph.D. Technology Center Practice Specialist 571-272-0829 TC 1600

  2. How Applicant can use the TPS or QAS • Applicant can use TCPS or QAS to discuss patentability issues in applications which are not being resolved by the SPE or examiner • Applicant can use TCPS or QAS to discuss TC policy issues (restriction, written description) • Applicant can use TCPS or QAS to determine who to contact on various issues

  3. TIPS ON EFFECTIVE INTERVIEW • Interview should be held only when the nature of the case is such that the interview could serve to develop and clarify specific issues • Interview should be arranged in advance • An interview should not extend beyond a reasonable period, usually no longer than 30 minutes • Submit an Applicant Initiated Interview Request Form (PTOL-413A) prior to an interview

  4. Tips on a Effective Interview • Substance of interview must be of record • Applicant is responsible for making the substance of an interview of record except when the interview is initiated by the examiner and the examiner provides a written summary • Interview Summary form does not need to be completed with an examiner’s amendment

  5. When interviews are prohibited or granted. • Interviews are not permitted prior to filing. However, Examiner may indicate the field of search. See MPEP 713.02 • Interview prior to first Office action is ordinarily granted in continuing applications in TC 1600. In other applications a request before the first office action will not be granted or acknowledged in TC 1600.

  6. When interviews areprohibited or granted. • Interviews are not permitted after an appeal brief is filed or after an application has been passed to issue except in unusual situations • Normally one interview after final rejection is permitted. A further interview may be held if it will expedite the issues on appeal or dispose of the application

  7. After Final Practice • Once a final rejection has been entered in an application, Applicant no longer has the right to unrestricted further prosecution ( i.e. to amend or add new claims) • The prosecution of an application before the examiner should ordinarily be concluded with the final Office action • Difficulties encountered with prosecution after final may be alleviated by including claims varying in scope from the broadest to the most narrowest which Applicant is willing to accept

  8. After Final Practice • A reply to a final rejection is limited to: • An Amendment/Argument in compliance with 37 CFR 1.116 • Notice of Appeal • Proper RCE • When applicant files an RCE, it is suggested that the applicant clearly indicate whether or not any previously filed after-final amendment should be entered

  9. Questions Anthony Caputa anthony.caputa@ uspto.gov 571-272-0829

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