Significant Final Rule Makings of 2004

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Significant Final Rule Makings of 2004
Biotech Partnership MeetingDecember 8, 2004

• Bob Spar, Director
• Office of Patent Legal Administration (OPLA)
• [phone]
• Deputy Commissioner for Patent Examination Policy
  (DCPEP)
• PatentPractice_at_uspto.gov

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Final Rule Makings

• Changes to Support Implementation of the USPTO
  21St Century Strategic Plan, Final Rule, 69 Fed.
  Reg. 56481 (September 21, 2004), 1287 Off. Gaz.
  Pat. Office 67 (October 12, 2004).
• Rules of Practice before the Board of Patent
  Appeals and Interferences, Final Rule, 69 Fed.
  Reg. 49959 (August 12, 2004), 1286 Off. Gaz. Pat.
  Office 204 (September 7, 2004).
• Revision of Power of Attorney and Assignment
  Practice, Final Rule, 69 Fed. Reg. 29865 (May 26,
  2004), 1283 Off. Gaz. Pat. Office 148 (June 22,
  2004).

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Final Rules, Federal Register Notices, and
Official Gazette Notices are available on the
USPTO web site at http//www.uspto.gov/web/offic
es/pac/dapp/ogsheet.html
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• Changes to Support Implementation of the USPTO
  21st Century Strategic Plan

Changes to Support Implementation of the United
States Patent and Trademark Office 21st Century
Strategic Plan, Final Rule, 69 Fed. Reg. 56481
(September 21, 2004), 1287 Off. Gaz. Pat. Office
67 (October 12, 2004).
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Significant Changes

• 1.4 Signatures (adding Electronic and
  S-signatures)
• 1.6 Submission of Drawing by Facsimile
• 1.17 Petition Fees
• 1.19 Document Supply Fees
• 1.27 Small Entity Status
• 1.52 Font Sizes, Compact Disc Specifications
• 1.57 (New) Incorporation by Reference
• 1.58, 1.83 Tables, Sequence Listings
• 1.76 Application Data Sheet
• 1.78 Benefit Claims
• 1.84 Drawings
• 1.91, 1.94 Models, Exhibits, Specimens
• 1.98 Information Disclosure Statements
• 1.102 Advancement of Examination
• 1.105 Requirements for Information
• 1.111 Supplemental Replies
• 1.115 Preliminary Amendments
• 1.175, 1.178 Reissue Applications
• 1.215 Eighteen Month Publication

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Effective Dates

• There are three effective dates based on the
  September 21, 2004 date of publication of the
  final rule in the Federal Register, as follows
• September 21, 2004 - The changes to 37 CFR
  1.4, 1.6, 1.10, 1.27, 1.57(a)(1) (a)(2), 1.78,
  1.84, 1.115, 1.137, 1.178, and 1.311.
• October 21, 2004 - The changes to 37 CFR 1.8,
  1.52, 1.57 (b) (g),1.58, 1.63, 1.69, 1.76,
  1.83, 1.85, 1.91, 1.94, 1.98, 1.102, 1.105,
  1.111, 1.121, 1.131, 1.165, 1.173, 1.175, 1.179,
  1.215, 1.324, 10.18 and 104.3.
• November 22, 2004 - The changes to 37 CFR
  1.12, 1.14, 1.17, 1.19, 1.47, 1.53, 1.57(a)(3),
  1.59, 1.84(a)(2), 1.103, 1.136, 1.182, 1.183,
  1.291, 1.295, 1.296, 1.377, 1.378, 1.550, 1.741,
  1.956, 5.12, 5.15, 5.25 and 41.20.

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3 Types of Permitted Signatures37 CFR 1.4(d)

• Handwritten (personally signed) signatures are
  now specifically provided for in 1.4(d)(1).
• The following additional types of signature are
  now acceptable
• S-signatures ( 1.4(d)(2))
• Example for signing applicant /James Jones/
  James T. Jones
• Electronic Filing System (EFS) character coded
  (electronic) signatures for correspondence
  transmitted via EFS (1.4(d)(3))
• Note electronic signatures in EFS must be
  completed by filling in the appropriate EFS menu
• EFS signatures have previously been acceptable
  under a waiver.
• Note Samples of acceptable signatures for
  applicants and registered practitioners are
  posted on the Offices web site.

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S-Signatures, 37 CFR 1.4(d)(2)Definition and Uses

• An S-Signature is any signature between forward
  slashes that is not a handwritten ( 1.4(d)(1)
  or (e)) or an EFS character coded signature (
  1.4(d)(3)).
• It is inserted between the forward slashes by
  electronic (e.g., a word processor) or mechanical
  means.
• S-Signatures may be used to sign all
  correspondence unless otherwise explicitly
  excluded (e.g., when an original handwritten or
  wet signature is required, such as is set forth
  in 37 CFR 1.4(e)).
• S-Signatures may be used on documents that are
  either
• Mailed or hand (courier) delivered,
• Transmitted by facsimile, or
• Submitted via EFS directly as an EFS Tagged Image
  File Format (TIFF) attachment (e.g., scanned
  image), to the Office.

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S-Signatures 5 Requirements37 CFR 1.4(d)(2)

• The S-signature must consist only of letters
  (including Kanji, etc.), or Arabic numbers, or
  both, and appropriate spaces, commas, periods,
  apostrophes, or hyphens for punctuation.
• The S-signature must be placed between forward
  slashes.
• The person signing must insert his or her own
  signature, 1.4(d)(2)(i)
• Only the signer can insert their own signature
  
• a secretary, paralegal, etc., is not permitted to
  sign/ insert another persons signature, e.g., a
  practitioners signature, and
• a practitioner is not permitted to sign/insert an
  inventors signature.
• Note Per the rule itself, the person inserting a
  signature certifies that the signature is his or
  her own signature ( 1.4(d)(4)(ii)(B)).

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S-Signature 5 Requirements (continued)37 CFR
1.4(d)(2)

• The name of the person signing must be printed or
  typed immediately adjacent (i.e, below, above, or
  beside) to the S-signature, and be reasonably
  specific, so the identity of the signer can be
  readily recognized.
• The name of the person signing may be inserted
  by someone other than the person signing, but the
  person signing must personally insert the
  S-Signature.
• For example, a secretary, paralegal, etc., may
  type the name of the person signing at any time
  (e.g., before or after the person signing inserts
  his or her own signature).
• A registered practitioner may S-sign but his or
  her registration number is required, either as
  part of the S-signature, or immediately below or
  adjacent to the signature.
• For example /John Attorney Reg. 99999/
• John Attorney

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Examples Where S-Signatures Can Be Used

• A practitioner creates a document and S-signature
  signs it on his/her PC. The practitioner can
  then
• Facsimile transmit the document directly from the
  PC to the Office or
• Print the document and then facsimile transmit,
  mail, or hand-carry the document to the Office
• An affidavit under 1.132 is S-signed by the
  party making the affidavit, the S-signed
  affidavit is then
• Electronically sent to the practitioner, e.g.,
  via an e-mail. The practitioner can then
  facsimile transmit, mail or hand-carry the
  S-signature signed document to the Office.
• Note Per the rule itself, the person submitting
  a document with an S-Signature or EFS character
  coded signature is certifying that they have a
  reasonable belief that the person whose signature
  is present on the document was inserted by that
  person 1.4(d)(ii)(A).

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EFS Character Coded Signatures, 37 CFR 1.4(d)(3)

• EFS Character Coded signatures must consist only
  of English letters, Arabic numbers, or both, with
  punctuation typed into an EFS menu.(
  1.4(d)(3)).
• The person signing must personally insert his/her
  electronic signature between forward slashes as
  with S-signatures but
• The name of the signer is not required in the
  rule because it is a required EFS software input.
• The EFS software also determines the location of
  the signers printed name and registration
  number, if applicable.
• The following correspondence filed via EFS as an
  EXtensible Markup Language (XML) document may
  include an EFS character coded signature
• new applications,
• assignments,
• amended biotech listings, and
• e-IDSs.

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Examples of EFS Signatures in IFW

• How correspondence created using, and transmitted
  via, EFS with a character coded signature appears
  in IFW
• Electronic Version and Stylesheet Version
  appear in upper left portion of document
  indicating the version of EFS software used

• Example The character coded signature is
  labeled Signature in declaration of this EFS
  version

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Name Requirement for S-Signatures and EFS
Character Coded Signatures

• There is no requirement that the signers actual,
  full or legal name be used.
• It is strongly suggested that the full name be
  used
• The typed or presented name below the signature
  must be reasonably specific enough so that the
  identity of the signer can be readily recognized
• (37 CFR 1.4(d)(2)(iii)(B)).
• Titles may be included as part of the signature.

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Certification Requirements 37 CFR 1.4(d)(4)

• Certification Requirement ( 1.4(d)(4)(ii)(A))
• For anothers signature A person submitting a
  document signed by another under 1.4(d)(2) or
  (d)(3)
• is obligated to have a reasonable basis to
  believe that the person whose signature is
  present on the document actually inserted that
  signature, and
• should retain evidence of authenticity of the
  signature.
• For your own signature The person inserting a
  signature under 1.4(d)(2) or (d)(3) in a
  document submitted to the Office certifies that
  the inserted signature appearing in the document
  is his or her own signature.
• Violations of the signature certifications may
  result in the imposition of sanctions under
  10.18(c) and (d).

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Questionable Signatures

• Ratification, confirmation or evidence of
  authenticity of a signature may be required where
  the Office has
• Reasonable doubt as to to its authenticity,
• Where the signature and typed or printed name do
  not clearly identify the person signing.
• The failure to follow the S-signature format and
  content requirements will usually be treated as a
  bona fide attempt, but will cause the paper to be
  treated as unsigned with differing results, e.g.
• Amendments would receive a new 1-month time
  period
• 1.63 declarations, would receive a two month
  time period and a surcharge may be imposed.

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Drawings May Be Submitted by Facsimile - 37 CFR
1.6

• Effective date September 21, 2004
• Black and white drawings will be permitted to be
  transmitted to the Office by facsimile in all
  applications other than original filings
• Codified previously accepted practice
• Color photographs or color drawings must continue
  to be hand-carried or mailed to the Office
  instead of being sent by facsimile and
• Black and white photographs or drawings with fine
  details should not be sent by facsimile
• Transmission via facsimile may degrade the
  quality of the drawings. The Office will
  generally print what is filed.

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Petition Fees37 CFR 1.17

• Petition fees have been adjusted to more
  accurately reflect the Offices current cost of
  treating petitions pursuant to 35 U.S.C. 41(d).
• Three levels of petitions fees are provided
• 130 petition fee retained in 1.17(h)
• e.g., 1.102(d) to make an application special,
• 200 petition fee created in 1.17(g)
• e.g., 1.47 nonsigning inventor and 1.59
  expungement, and
• 400 petition fee created in 1.17(f).
• e.g., 1.53(e) to accord a filing date, 1.182
  for questions not specifically provided for, and
  1.183 for waiver of a requirement of the rules.
• New form PTO/SB/17p is available on the USPTO
  forms web page.

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Document Supply Fees37 CFR 1.19

• Copies of files and/or documents may be provided
  in paper or electronic form.
• Electronic form may be
• Compact disc (CD)
• Transmitted over Internet or
• Another electronic medium as designated by the
  Director.
• For a copy of an application file wrapper and
  contents, the fee will be
• 200 if provided on paper (up to 400 pages) or
• 55 if provided on one compact disc or other
  electronic form.
• The seven-day requirement for processing copy
  requests is removed.

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Small Entity Status37 CFR 1.27

• Impact of a Security Interest Held by a Large
  Entity A security interest in an application or
  patent held by a large entity is not a sufficient
  interest to bar entitlement to small entity
  status so long as the security interest is not
  triggered. ( 1.27(a)(5)).
• Impact of SBA Requirements on Foreign Applicants
  Certain Small Business Administration (SBA)
  requirements relating to location in the U.S. or
  making a significant contribution to the U.S.
  economy do not bar entitlement to small entity
  status for patent applicants. ( 1.27(a)(2)(ii)).

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Font Sizes 37 CFR 1.52(b)

• Recommended Font Size The rule is revised to
  recommend that the preferred font size of text is
  12 points, which is identified in the preamble
  discussion as approximately 0.166 inches or 0.422
  cm high ( 1.52(b)(2)(ii)).
  See also 1.58(c).

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Compact Disc Specifications 37 CFR 1.52(e)

• The requirements permitting tables on compact
  disc are changed
• A table of any size may be placed on a compact
  disc if the total number of pages of all the
  tables in an application exceeds 100 pages in
  length (or any single table more than 50 pages in
  length, which practice is unchanged) (
  1.52(e)(1)(iii))
• What constitutes a table page is clarified to be
  a page printed on paper pursuant to 1.52(b)
  and 1.58(c) of this section ( 1.52(e)(1)(iii))
• CDs must be finalized to assure archival nature
  of discs. Finalized means that the compact discs
  are closed to adding further data (
  1.52(e)(3)(i))
• Landscape orientation should be indicated on the
  transmittal letter It is clarified that
  landscape orientation of a table is an example of
  special information needed to interpret that
  table and such information should be provided on
  the transmittal letter ( 1.52(e)(3)(ii)).

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Incorporation by Reference 37 CFR 1.57(New
Rule)

• 37 CFR 1.57 is added to provide for
  incorporation by reference.
• Section 1.57(a) is added so a priority/benefit
  claim can be considered an incorporation by
  reference of a prior-filed application as to
  inadvertently omitted material only.
• Sections 1.57(b) through (e) treat incorporation
  by reference of essential and nonessential
  material into an application.
• Section 1.57(f) covers how material incorporated
  by reference is inserted, by amendment into the
  specification or drawings of an application.
• Section 1.57(g) codifies that a noncompliant
  incorporation by reference is not effective, and
  sets forth the requirements for correcting the
  incorporation by reference to be compliant.

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Priority/Benefit Claim can be Considered an
Incorporation by Reference of a Prior-Filed
Application - 37 CFR 1.57(a) (New Rule)

• Priority/benefit claims will now act as an
  incorporation by reference of a prior-filed
  application as to inadvertently omitted material
  only. 37 CFR 1.57(a).
• Applies to applications filed on or after
  September 21, 2004 (effective date for 1.57(a))
• The application which inadvertently omitted
  material must be filed on or after the effective
  date
• but the prior-filed application being relied upon
  for the omitted material can be filed prior to
  the effective date.
• Prior practice Applicant could only add to the
  current application material found in a prior
  application if the prior application was
  expressly incorporated by reference.
• Material found in a parent application may now be
  added under 1.57(a) (limited to inadvertent
  omissions) or under express incorporation by
  reference provision, if present.

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Priority/Benefit Claim can be Considered an
Incorporation by Reference of a Prior-Filed
Application - 37 CFR 1.57(a) (Requirements)

• Requirements for corrective amendment under
  1.57(a)
• All or a portion of the specification or
  drawing(s) from a prior-filed application may be
  added by corrective amendment to a later-filed
  application claiming the priority/benefit of the
  prior-filed application under 1.55 or 1.78,
  where
• a) The claim was present on the filing date of
  the later-filed application
• b) The material to be added was inadvertently
  omitted from the later-filed application and
• c) The omitted portion is completely contained
  in the prior-filed application.
• Mere reference to another co-pending application
  is not a benefit claim (e.g., a statement that
  prior patent application 09/123456 is copending
  with the current application), and it will not be
  treated as an incorporation by reference of any
  subject matter found therein.

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Priority/Benefit Claim can be Considered an
Incorporation by Reference of a Prior-Filed
Application 37 CFR 1.57(a) (Requirements)

• Additional Requirements for Corrective Amendment
  Along with the amendment to include
  inadvertently omitted material, applicant must
  submit
• a) A copy of the prior application, except
  where the prior application is filed under 35
  U.S.C. 111
• b) An English language translation, if the
  prior application is in a foreign language and
• c) Identification of where in the prior
  application the omitted portion to be added to
  the later application can be found.
• A statement that the omission was inadvertent is
  not required.
• Any amendment to add the omitted material would
  constitute a certification under 10.18(b).

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Priority or Benefit Claim can be Considered an
Incorporation by Reference of a Prior-Filed
Application 37 CFR 1.57(a) (Requirements)

• Timeliness Requirement for corrective amendment
• a) If noted by OIPE or the examiner within any
  time period set by the Office,
• b) If noted by applicant not later than close
  of prosecution (as defined by 1.114(b)) or the
  abandonment of the application, whichever occurs
  earlier.
• Any amendment to an international application is
  effective only as to the U.S., and shall not
  affect the international filing date of the
  application.

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Incorporation by Reference of Essential and
Nonessential Material 37 CFR 1.57(b)-(g) (New)

• Sections 1.57(b)-(g) generally codified the
  existing incorporation by reference practice set
  forth in MPEP 608.01(p)(8th Ed., rev 2, May 2004)
  with some changes.
• Definitions of essential and non-essential
  material have been added.
• The new provisions in 1.57(b)-(g) apply to
  applications filed on or after October 21, 2004
• Clear intent and identification still required.
  To be an effective incorporation by reference, it
  must be expressly presented in the specification,
  1.57(b), as follows
• using the root words incorporate and
  reference is now required, and
• the referenced patent, application, or
  publication must be clearly identified.

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Incorporation by Reference of Essential Material
37 CFR 1.57(c) (New)

• Essential material is material to support claimed
  invention requirements of 35 U.S.C. 112,
  paragraphs 1, 2 and 6. 1.57(c)(1)-(3)
• Essential Material may be incorporated by
  reference only to
• U.S. patents or U.S. patent application
  publications, but the referenced patent or
  publication may not itself incorporate such
  essential material. 1.57(c)
• Pending unpublished U.S. applications
• Essential material may no longer be incorporated
  by reference to an unpublished pending
  application.
• The practice of incorporating by reference
  essential material found in unpublished
  applications in which the issue fee has been paid
  has been eliminated.

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Incorporation by Reference of Essential and
Nonessential Material 37 CFR 1.57(d),(e) (g)
(New)

• Nonessential material may be incorporated by
  reference to
• U.S. and foreign patents, publications
  (including U.S. foreign application
  publications, and non-patent literature), and
  commonly owned U.S. applications. 1.57(d).
• Material may not be incorporated using hyperlinks
  or other form of browser executable codes.
• Examiner may require submission of a copy of the
  material incorporated even if properly
  incorporated. 1.57(e)

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Incorporation by Reference of Essential and
Nonessential Material 37 CFR 1.57(f) (g) (New)

• An incorporation by reference that does not
  comply with 1.57(b), (c), or (d) is not
  effective.
• There are two correction options when the
  application as filed clearly conveys an intent to
  incorporate specific material by reference
• but the root words are not used, and/or
• the referenced document is sufficiently described
  but not clearly identified or
• the material being incorporated is essential
  material but is found in certain documents
  (e.g., pending U.S. applications, foreign patent
  documents and NPL).

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Incorporation by Reference of Essential and
Nonessential Material 37 CFR 1.57(f) (g) (New)

• Correction of an ineffective incorporation by
  reference
• Option 1 An amendment may be made a) to insert
  the required root words, and/or b) to clearly
  identify the referenced patent, U.S. application
  publication, or if nonessential material, the
  application or other publication. See 1.57(g).
• Example Given language the disclosure of
  application attorney docket number 1234.5
  entitled Glow in the Dark Tennis Ball to Jones,
  filed Jan. 1, 2003 is hereby incorporated by
  reference.
• A permitted amendment would be the disclosure
  of U.S. patent 5,555,555 entitled Glow in the
  Dark Tennis Ball to Jones is hereby incorporated
  by reference.
• Note An application number (if non-essential
  material) may be used to replace attorney docket
  number 1234.5.

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Incorporation by Reference of Essential and
Nonessential Material 37 CFR 1.57(f) (g) (New)

• Correction of an ineffective incorporation by
  reference (continued)
• Option 2 An amendment may be made inserting the
  material intended to be incorporated. 1.57(f).
• This option could be used for adding essential
  material found in certain documents (e.g.,
  pending U.S. applications, foreign patent
  documents and NPL).
• Where incorporation by reference would be
  improper
• This option could additionally be used for adding
  nonessential material.
• An amendment to include the incorporated material
  must be accompanied by a statement that the
  material being inserted is the material
  previously incorporated by reference and that the
  amendment contains no new matter.
• This requirement is a change from previous
  practice.
• An affidavit or declaration (that the amendatory
  material consists of the same material
  incorporated by reference in the referencing
  application) is no longer required. Form Par.
  6.19 will be updated consistent with 1.57(f).

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Incorporation by Reference of Essential and
Nonessential Material 37 CFR 1.57(g) (New)

• If an incorporation by reference of essential
  material is ineffective, such as incorporation
  from a pending unpublished application, (which is
  no longer permitted), a rejection under 35 USC
  112 paragraphs 1, 2 or 6 will be made, as
  appropriate.
• Applicants should not request to hold a
  correction of an incorporation by reference in
  abeyance since such a request to hold a
  correction in abeyance is no longer permitted.
• Any applicant initiated correction must be made
  no later than close of prosecution as defined in
  1.114(b) or abandonment, whichever is earlier.
  1.57(g).

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Tables, Sequence Listings, Font Sizes, 37 CFR
1.58 and 1.83

• Tables and Sequence Listings included in the
  specification must not be duplicated in the
  drawings ( 1.58(a), 1.83)
• The prohibition does not apply to applications
  filed under 35 USC 371.
• Tables filed in electronic form must be encoded
  to visually maintain the relational information
  they convey when the file is opened for viewing
  in the Office (e.g., rows and columns) (
  1.58(b)).
• Recommended Font Size The rule is revised to
  recommend that the preferred font size is 12,
  which is approximately 0.166 inches or 0.422 cm
  high ( 1.58(c)). See also
  1.52(b)(2)(ii).

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Application Data Sheet (ADS)37 CFR 1.76

• ADS, and any supplemental ADS, must have
• The appropriate title (i.e., Application Data
  Sheet or Supplemental Application Data Sheet)
• All seven section headings
• The appropriate data for each section and
• Additionally, for supplemental ADSs,
  identification of what is being corrected, added,
  or deleted.
• A supplemental ADS must be a complete replacement
  ADS showing the changes using underlining and
  strike-through.
• Submitting only the changes or new information in
  a supplemental ADS is no longer permitted.

37
Application Data Sheet (ADS)37 CFR 1.76

• If an ADS is inconsistent with information
  provided in another document that was submitted
  at the same time or prior to the ADS submission,
  the ADS will control
• e.g., the correspondence address designated in an
  ADS is used instead of the address in a
  transmittal letter that was submitted prior to or
  with the ADS,
• but not for inventorship or citizenship. (
  1.76(d)(1) and (2))
• The option of utilizing a 1.63 oath or
  declaration to correct captured bibliographic
  data has been eliminated ( 1.76(d)(4)).

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Domestic Benefit Claims Double Patenting
Rejections 37 CFR 1.78

• Effective Date September 21, 2004
• Former practice required a single sentence to
  identify benefit claims to prior U.S.
  applications. This is still permitted.
• Multiple Sentences Permitted multiple sentences
  forming a continuous string starting with the
  first sentence of the specification are now
  permitted to identify benefit claims to prior
  U.S. applications.
• The multiple sentences must begin as the first
  sentence after the title, and the second, or any
  additional, sentence including a benefit claim
  must follow the first sentence and not be
  separated from the first sentence by any other
  sentence not making a benefit claim.

39
Domestic Benefit Claims Double Patenting
Rejections 37 CFR 1.78

• Double Patenting Rejections the rule clarifies
  that the prior art exclusion under 35 U.S.C.
  103(c) (common assignee) does not preclude a
  double patenting rejection. 1.78(c).
• Applicants responsibility has not changed. They
  should still disclose all related applications
  where a double patenting rejection can be made,
  and should disclose any related application(s) if
  there is any doubt. 37 CFR 1.56.

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Drawings 37 CFR 1.84

• Codification of a previous OG Notice to remove
  the requirement for black and white copies of
  color drawings and photos.
• Adds recommendation that original drawings
  include identification labels, and if labels are
  provided they must be placed on ( 1.84(c))
• front of drawing, and
• within the top margin.
• Identification Labels To be consistent with
  1.121(d), drawings submitted in an amendment must
  be identified as either
• Replacement Sheet (amended drawing),
• New Sheet, or
• Annotated Sheet (for a marked-up copy).

41
Models, Exhibits, and Specimens 37 CFR 1.91 and
1.94

• Effective Date October 21, 2004
• Photos Now Required Physical models or exhibits
  that the Office cannot scan must be accompanied
  by photographs substantially in compliance with
  1.84, showing adequate multiple views of material
  features.
• Artifact File Models, exhibits or specimens
  that cannot be scanned for IFW, will be stored in
  artifact folders until they can be disposed of.
• Applicant can be required to arrange for the
  return of their model, exhibit or specimen upon
  notification at applicants expense when they are
  no longer necessary for the conduct of business
  before the Office. Retention by applicant is
  ordinarily required for the enforceable life of
  any patent.
• The Office will dispose of perishables without
  notice to the applicant unless applicant notifies
  the Office upon submission that a return is
  desired and promptly makes arrangements for their
  return upon notification by the Office.

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Information Disclosure Statements37 CFR 1.98 -
No Copies Required

• Applies to pending applications.
• Per 1.98(a)(2), a copy of each cited U.S.
  patent and U.S. patent application publication is
  no longer required to be filed with an IDS. The
  filing date of the application being examined is
  no longer relevant.
• Strategic Plan Final Rule, effective October 21,
  2004
• This rule expands on Information Disclosure
  Statements May Be Filed Without Copies of U.S.
  patents and Published Applications in Patent
  Applications filed after June 30, 2003, 1273 Off.
  Gaz. Pat. Office 55 (August 5, 2003).
• Per waiver in OG Notice, a copy of each cited
  pending U.S. patent application, or portion of
  the application which caused it to be listed, is
  no longer required to be filed with an IDS if
• The cited pending application is stored in the
  IFW system and
• The cited information is limited to the
  specification, including the claims, and
  drawings, of the cited pending U.S. application,
  even if it is stored in an artifact folder. See
  examples on the next slide.
• See Waiver of the Copy Requirement in 37 CFR
  1.98 for Cited Pending U.S. Patent Applications,
  1287 Off. Gaz. Pat. Office 163 (October 19,
  2004)(signed Sept. 21, 2004).

43
Information Disclosure Statements37 CFR 1.98
OG Waiver, Artifacts

• Examples when a pending U.S. patent application
  is cited in an IDS
• Example 1 If the cited information from a
  pending application in IFW is a sequence listing
  or large table stored on a CD that is part of the
  specification, a copy of the sequence listing or
  table stored on a CD is not required. Examiner
  may order the CD from the artifact folder of the
  cited pending application when considering the
  IDS.
• Example 2 If the cited information from the
  pending application is an Office action,
  affidavit, exhibit, or IDS filed in the cited
  pending U.S. application which is not part of the
  specification, a copy of the cited paper is
  required.
• Applicant should cite the pending U.S.
  application in the Non Patent Literature
  Documents section of the PTO/SB/08B and provide
  a copy of the paper.

44
Information Disclosure Statements 37 CFR 1.98 -
Copy Requirements

• Applicants are still required to submit a copy
  of
• Each cited foreign patent document
• Each cited non-patent literature publication, or
  the portion therein which caused it to be listed
  
• Each cited U.S. pending application that is not
  stored in IFW
• All information cited (e.g., an affidavit or
  Office action), other than the specification,
  including claims and drawings, of a pending U.S.
  application and
• All other cited information or the portion which
  caused it to be listed.

45
Information Disclosure Statements37 CFR 1.98 -
Electronic Submissions

• Recommendation Applicants are encouraged to file
  an e-IDS via EFS for U.S. patents and patent
  application publications rather than a paper IDS
  form (1449 or PTO/SB/08) listing the citations.
• A paper IDS may include a compact disk (CD) that
  has tables, sequence listings, or program
  listings. See 37 CFR 1.52(e).
• A CD cannot be used to submit an IDS listing, nor
  copies of patents and publications.
• A large number of citations of U.S. patents, U.S.
  patent application publications and U.S. patent
  applications may trigger an Office requirement
  for applicant to supply paper copies for all
  citations. See preamble discussion in Final Rule
  notice.

46
Information Disclosure Statements 37 CFR 1.98 -
Format Requirements

• Additional format requirements for the listing of
  cited prior art documents
• A separate section for citations of U.S. patents
  and U.S. patent application publications
• The application number of the application in
  which the IDS is being submitted on each page of
  the listing
• A column that provides a blank space next to each
  citation for the examiners initials when the
  examiner considers the cited document and
• A heading on the listing that clearly indicates
  that the list is an Information Disclosure
  Statement (e.g., not a citation of prior art
  under 1.99 or 1.291).

47
Information Disclosure Statements 37 CFR 1.98 -
Format Requirements

• Applicants will generally comply with the format
  requirements if they use current forms PTO/SB08A
  B (Rev. 08-03 or later).
• An IDS list that is, or includes, a copy of a
  previously initialed PTO-1449 or PTO/SB/08 form
  from another application may no longer be
  acceptable
• it may not have a blank space for the examiner to
  initial and
• the correct application number may not be on each
  page of the list.
• If the IDS is not in compliance with the format
  requirements, it may not be considered.

48
Advancement of Examination 37 CFR 1.102

• A petition without fee to make an application
  special based on an inventions ability to
  counter terrorism has been established.
  1.102(c).
• There must be a good faith effort to determine
  that the claimed invention is in fact materially
  directed to countering terrorism. 1.56 and
  10.18(b).
• Note Where the disclosure of the application is
  not clear on its face that the claimed invention
  is materially directed to countering terrorism,
  an explanatory statement to that effect is
  required. MPEP 708.02, XI.

49
Requirements for Information 37 CFR 1.105

• Section 1.105 has been amended to additionally
  provide for requiring factual information (not
  opinions nor the level of ordinary skill in the
  art) via
• Interrogatories in the form of specific questions
  seeking applicants factual knowledge or
• Stipulations as to facts with which the applicant
  may agree or disagree.
• The types of factual information concerning
• The related art
• The disclosure
• Claimed subject matter
• Other factual information pertinent to
  patentability or
• The accuracy of the examiners stated
  interpretation of such items.

50
Requirements for Information 37 CFR 1.105

• Specific examples of applicants actual
  knowledge
• The common technical features shared among all
  claims or admission that certain groups of claims
  do not share any common technical features
• The support found in the disclosure for means or
  step plus function limitation recited in the
  claim (the corresponding structure, material or
  acts) (35 U.S.C. 112, 6th paragraph)
• The portions of the disclosure that provide the
  written description and enablement support for
  specific claim elements
• The intended meaning of claim limitations or
  terms, such as what teachings in the prior art
  would be covered and which dictionary definitions
  would be appropriate.

51
Requirements for Information 37 CFR 1.105

• Specific examples of applicants actual knowledge
  (continued)
• The portions of each claim that correspond to any
  admitted prior art of the specification
• The specific utility provided by the claimed
  subject matter on a claim by claim basis
• Whether a dependent claim element is known in the
  prior art based on the examiner having a
  reasonable basis for believing so
• The support for added limitations in an amended
  claim and
• The facts related to public use or sale
  situations.

52
Requirements for Information 37 CFR 1.105

• The Office may accept as a complete reply to a
  requirement for factual information that the
  information is unknown or is not readily
  available, without further specification as to
  which of the two is relied upon
• Such reply may only be used after applicant has
  made a good faith attempt to obtain the
  information based on reasonable inquiry and
• Such reply may affect the prosecution of the
  application, e.g.
• Where the inquiry is in regard to correlation of
  structure set forth in the specification with a
  claim under 35 U.S.C. 112, paragraph 6, a reply
  that the correlation in the specification is
  unknown may cause, e.g., rejections under 35
  U.S.C. 112, paragraphs 1 and 2 to be made.
• For a transition period, the Office will provide
  management review of requirements for information
  for interrogatories and stipulations.

53
Supplemental Replies37 CFR 1.111(a)(2)

• Supplemental replies are no longer entered as a
  matter of right.
• After a complete reply has been filed, the Office
  may enter a supplemental reply that is filed
  before final rejection or allowance and in
  sufficient time to be entered into the
  application file, if the subsequent reply is
  clearly limited upon cursory review to
• Cancellation of claims
• Adoption of an examiner suggestion(s)
• Placement of the application in condition for
  allowance
• Reply to an Office requirement made after the
  first reply was filed
• Correction of informalities (e.g., typographical
  errors) or
• Simplification of issues for appeal.

54
Supplemental Replies37 CFR 1.111(a)(2)

• Supplemental replies filed during a suspension of
  action under 1.103(a) or (c) will continue to
  be entered as a matter of right.
• If the applicant wishes to have a (not-entered)
  supplemental reply considered by the examiner,
  applicant must include the contents of the
  supplemental reply in a subsequent proper reply.
• IDSs are not considered replies and are not
  subject to the new limitations
• except where a second IDS is submitted in reply
  to a 1.105 requirement for information.

55
Preliminary Amendments37 CFR 1.115

• Effective Date Applies to applications filed on
  or after September 21, 2004.
• Preliminary amendments that are present on the
  filing date of an application are treated as part
  of the original disclosure
• Applicants are responsible for reviewing all
  preliminary amendments present on the filing date
  and providing a reference thereto in a 1.63
  oath or declaration for each such preliminary
  amendment containing subject matter not otherwise
  present in the application as filed.
• Preliminary amendments seeking cancellation of
  all the claims without presenting any new or
  substitute claims will be disapproved.

56
Reissue Applications 37 CFR 1.175 and 1.178

• If a reissue continuation of a reissue
  application is filed and the parent reissue is
  not being abandoned, then the continuation must
  identify an error not corrected in the parent
  reissue application. 1.175.
• The requirement for physical surrender of the
  original patent has been eliminated. 1.178.
• Surrender is automatic upon grant of the reissue
  patent.
• Effective date September 21, 2004, the date of
  publication of the final rule.
• Applies retroactively to all pending reissue
  applications.

57
Eighteen Month Publication of Application 37 CFR
1.215

• Patent application publications may be based on
  amendments to ( 1.215(a))
• Abstract
• Claims that are reflected in a complete claim
  listing
• Drawings and
• Specification (other than abstract or claims) if
  amended via a substitute specification.
• The amendment must be submitted in sufficient
  time to be entered into the Office file wrapper
  of the application before technical preparations
  for publication have begun
• Generally four months prior to the projected date
  of publication.

58
Protests, Second or Subsequent 37 CFR 1.291

• A statement must accompany a protest that it is
  the first protest submitted in the application by
  the real party in interest (who does not need to
  be identified), or there must be compliance with
  the requirements for second or subsequent
  protests ( 1.291(b)(2))
• This section does not apply where a protest is
  the first protest in the application.
• To eliminate cumulative prior art submissions by
  a single protester, second or subsequent protests
  must explain (a) why additional prior art issues
  are significantly different and (b) why they
  were not earlier presented. ( 1.291(c)(5)).
• In addition, a processing fee under 1.17(i) is
  required.

59
List of Contacts

• Generally Robert Spar, Director [phone]
• Hiram Bernstein [phone]
• Office of Patent Legal Administration (571)
  272-7701

• 1.4, 1.52, 1.57 (b)-(g), 1.58(b) (c) -
  Michael Lewis [phone]
• 1.6, 1.19, 1.58(a) (c), 1.83, 1.84 - Karin
  Ferriter [phone]
• 1.17, 1.102, 1.291 - James Engel (571)
  272-7725
• 1.27, 1.57(a), 1.91, 1.94 - Eugenia Jones
  [phone]
• 1.78, 1.98 - Jeanne Clark [phone]
• 1.76 - Kery Fries [phone]
• 1.105 - Anton Fetting [phone]
• 1.111 - Joni Chang [phone]
• 1.115 - Fred Silverberg [phone]
• 1.215 - Mark Polutta [phone]
• 1.175, 1.178 - Kenneth Schor [phone]

60
For More Information
Questions and answers regarding this final rule
package will be posted on the Offices official
website, http//www.uspto.gov. This slide set,
signature examples and executive summary are also
available on the Offices web site at
http//www.uspto.gov/web/offices/pac/dapp/opla/pre
ognotice/spfrmoreinfo.html
61

• Rules of Practice before the Board of Patent
  Appeals and Interferences Changes

Rules of Practice before the Board of Patent
Appeals and Interferences, Final Rule, 69 Fed.
Reg. 49959 (August 12, 2004), 1286 Off. Gaz. Pat.
Office 204 (September 7, 2004). Effective date
September 13, 2004
62
Practice Before the BPAI

• Effective Date September 13, 2004
• Generally, any paper filed by applicants or
  mailed by the Office on or after September 13,
  2004 must comply with the revised or new rules.
• Appeal briefs filed prior to September 13, 2004
  must either comply with former 1.192 or new
  41.37.
• Certificate of mailing or transmission in
  compliance with 1.8 will be applicable to
  determine if a paper was filed prior to the
  effective date in order to determine which rule
  applies.
• For more information concerning the effective
  date, see OG notice, Clarification of the
  Effective Date Provision in the Rules of Practice
  Before the Board of Patent Appeals and
  Interferences (Final Rule), available on the
  USPTO web site at www.uspto.gov.

63
Practice Before the BPAI

• New part 41 for rules relating to appeals and
  practice
• before BPAI
• General Provisions subpart A, 41.1-41.20.
• Ex Parte Appeal subpart B, 41.30-41.54.
• Inter Partes Reexamination Appeal subpart C,
  41.60-41.81.
• Contested Cases (including interferences)
  subpart D, 41.100-41.158.
• Patent Interferences subpart E,
  41.200-41.208.
• Section 1.191 has been revised to refer to part
  41.
• Sections 1.192-196 have been deleted.

64
Practice Before the BPAI

• Subpart B Ex Parte Appeals
• Definitions - 41.30.
• Appeal to Board - 41.31.
• Amendments and affidavits or other evidence after
  appeal - 41.33.
• Jurisdiction over appeal - 41.35.
• Appeal brief - 41.37.
• Examiners answer - 41.39.
• Reply brief - 41.41
• Examiners response to reply brief (supplemental
  examiners answer) - 41.43.
• Oral hearing - 41.47
• Decisions and other actions by the Board -
  41.50
• Rehearing - 41.52
• Action following decision - 41.54.

65
Practice Before the BPAI

• Significant Changes for Ex Parte Appeals
• The standard for entering affidavits or other
  evidence submitted after a final rejection now
  are set forth in 1.116(e) and 41.33(d)(1)
  (d)(2).
• The requirements of the content and format of the
  appeal brief have been revised (41.37).
• Examiner's answer may include a new ground of
  rejection (41.39).
• Appellant may request that prosecution be
  reopened (41.39(b)) when the examiners answer
  includes a new ground of rejection.
• Supplemental examiner's answer is permitted to
  respond to any new issue raised in the reply
  brief (41.43).
• After a BPAI remand for further consideration of
  a rejection, if an examiners answer is written,
  appellant may request that prosecution be
  reopened (41.50(a)(2)).

66
Practice Before the BPAI

• The practice for amendments filed after final
  action, but prior to the date of filing a brief,
  has not changed (1.116 and 41.33(a)).
• Sections 41.33(a), (b) (c) apply to amendments.
• Sections 41.33(d)(1) (d)(2) apply to affidavits
  and other evidence.

41.33(b),(c) (d)(2)
41.33(a) (d)(1)
1.116

Notice Of Appeal
Appeal Brief
Decision
FR
67
Practice Before the BPAIAmendments - 1.116 and
41.33(a)

• The practice for amendments filed after final
  action, but prior to the date of filing a brief,
  has not changed (1.116 and 41.33(a) have the
  same standard for entry).
• Amendments filed after the mailing of a final
  Office action, but prior to the date of filing a
  brief, may be admitted only to
• Cancel claims
• Comply with any requirement of form expressly set
  forth in a previous action
• Present rejected claims in better form for
  consideration on appeal or
• Amend the specification or claims upon a showing
  of good and sufficient reasons why the amendment
  is necessary and was not earlier presented.

68
Practice Before the BPAIAmendments - 1.116 and
41.33(a)

• The practice for amendments filed after final
  action, but prior to the date of filing a brief,
  has not changed (1.116 and 41.33(a) have the
  same standard for entry) (continued).
• If an amendment filed after final action, but
  prior to the date of filing an appeal brief, is
  denied entry, an advisory action (PTOL-303) will
  be mailed to notify the applicant of the reason
  for non-entry.
• Examiner may enter an amendment filed after final
  action, but prior to the date of filing an appeal
  brief, that places the application in condition
  for allowance.

69
Practice Before the BPAI Amendments - 41.33(b)
(c)

• New 41.33(b) provides that amendments filed on
  or after the date of filing an appeal brief may
  be admitted only to
• Cancel claims, where such cancellation does not
  affect the scope of any other pending claim in
  the proceeding, or
• Rewrite dependent claims into independent form.
• No limitation of a dependent claim can be
  excluded in rewriting that claim into independent
  form.
• New 41.33(c) provides that all other amendments
  filed after notice of appeal will not be entered,
• With a few exceptions, e.g., applicant requests
  that prosecution be reopened where the examiners
  answer includes a new ground of rejection.

70
Practice Before the BPAIAffidavits or Other
Evidence - 1.116(e)

• Rule 1.116 now specifically applies to affidavits
  or other evidence
• Affidavits or other evidence filed after final
  action, but before or on the date of filing a
  notice of appeal, may be admitted upon a showing
  of good and sufficient reasons why the affidavit
  or other evidence is necessary and was not
  earlier presented ( 1.116(e)).
• Other evidence includes declarations and
  exhibits, but not IDSs (which are treated in
  accordance with
• 1.97 and 1.98).

71
Practice Before the BPAIAffidavits or Other
Evidence - 41.33(d)(1)(d)(2)

• Affidavits or other evidence filed after the date
  of filing a notice of appeal, but prior to the
  date of filing a brief, (41.33(d)(1)) may be
  admitted if the examiner determines that
• A showing of good and sufficient reasons why the
  affidavit or other evidence is necessary and was
  not earlier presented has been made and
• The affidavit or other evidence overcomes all
  rejections under appeal.
• Section 41.33(d)(2) provides that all other
  affidavits or other evidence filed after the date
  of filing a notice of appeal will not be entered,
• With a few exceptions, e.g., applicant requests
  that prosecution be reopened where the examiners
  answer includes a new ground of rejection.

72
Practice Before the BPAI Appeal Brief - 41.37

• Appeal Brief copy requirement and time for
  filing ( 41.37)
• One copy of the brief is required rather than
  three copies consistent with the implementation
  of IFW.
• The brief is required to be filed within two
  months from the date of filing of the notice of
  appeal.
• The time allowed for reply to the action from
  which the appeal was taken is no longer relevant.
• The time period for filing the brief is
  extendable under
• 1.136(a) (b) for patent applications (e.g.,
  may extend up to five months after the two month
  time period) and
• 1.550(c) for ex parte reexamination
  proceedings. See 41.37(e).

73
Practice Before the BPAI Appeal Brief - 41.37

• Appeal Brief effective date impact
• Appeal Brief filed on or after September 13, 2004
  must be in compliance with the requirements of
  41.37(c).
• Appeal Brief filed prior to September 13, 2004
  must either be in compliance with the
  requirements set forth in former 1.192 or new
  41.37(c).
• If an appeal brief filed prior to the effective
  date fails to comply with former 1.192 and the
  Office mails a notice requiring correction(s), an
  amended brief that complies with either former
  1.192 or 41.37(c) would be acceptable.
• If appellant reinstates the appeal on or after
  the effective date, the second appeal brief must
  be in compliance with the requirements of
  41.37(c).

74
Practice Before the BPAI Appeal Brief - 41.37

• Content and format of the appeal brief ( 41.37)
• The brief must contain the following items (
  41.37(c))
• Real party in interest (similar to former
  1.192).
• A statement identifying by name the real party in
  interest even if the party named in the caption
  of the brief is the real party in interest.
• Related appeals and interferences (similar to
  former 1.192).
• Identification of all other prior and pending
  appeals, interferences or judicial proceedings
  which may be related to, directly affect or be
  directly affected by or have a bearing on the
  Boards decision.
• Status of claims (similar to former 1.192).
• The status of all the claims in the proceeding
  (e.g., rejected, allowed or confirmed, withdrawn,
  objected to, canceled) and an identification of
  the appealed claims.

75
Practice Before the BPAI Appeal Brief - 41.37

• The brief must contain the following items (
  41.37(c)) (continued)
• Status of amendments (same as former 1.192).
• A statement of the status of any amendment filed
  subsequent to final rejection.
• Summary of claimed subject matter (replacing
  summary of invention).
• A concise explanation of the subject matter
  defined in each of the independent claims
  involved in the appeal,
• Must refer to the specification by page and line
  number, and to the drawing, if any, by reference
  characters.
• For each independent claim involved in the appeal
  and for each dependent claim argued separately,
• Every means plus function and step plus function
  must be identified, and
• The structure, material, or acts described in the
  specification as corresponding to each claimed
  function must be set forth with reference to the
  specification by page and line number, and to the
  drawing, if any, by reference characters.

76
Practice Before the BPAI Appeal Brief - 41.37

• The brief must contain the following items (
  41.37(c)) (continued)
• Grounds of rejection to be reviewed on appeal
  (replacing issues for review and grouping of
  claims).
• Example Claims 1 to 10 stand rejected under 35
  U.S.C. 102(b) as being anticipated by U.S. Patent
  No. X.
• Argument (has been revised).
• A separate heading is required for each ground of
  rejection.
• Any claim(s) argued separately should be placed
  under a subheading.
• A statement which merely points out what a claim
  recites will not be considered an argument for
  separate patentability of the claim.
• When multiple claims subject to the same ground
  of rejection are argued as a group, the Board may
  select a single claim from the group to decid