Friday, March 16, 2007

2004 Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan

On September 21, 2004, the U.S. Patent and Trademark Office published substantial rule changes to support implementation of the United States Patent and Trademark Office's "21st Century Strategic Plan".

The rule change notice can be found here:

Most of the rule changes were effective October 21, 2004, but some changes were effective September 21, 2004 and November 22, 2004. The stated purpose of the rule changes was to "transform the Office into a quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system."

Section 1.4, before the changes, already indicated that copies of signatures were permitted. Section 1.4 was amended to specifically indicate that the signatures covered under 1.4(d)(1) are handwritten signatures and that dark ink or its equivalent must be used. Section 1.4(d)(2) was rewritten to provide for the signing of correspondence by use of an S-Signature, defined as a signature between forward slash marks. The S-signature was intended for electronic filings, but could be utilized with correspondence filed in the Office in paper, by facsimile transmission, or via the electronic filing system. A signer must directly type his or her own signature on a keyboard--a secretary is not permitted to type in the signature of a practitioner even if the practitioner directs the secretary to do so. A person submitting a document signed by another is obligated to have a reasonable basis to believe that that the signature on the document was actually inserted by that person and should retain evidence of authenticity of the signature. Sanctions are possible for violating certification as to signatures. Provision was made for the requirement of ratification or confirmation or evidence of authenticity of a signature where the Office has reasonable doubt as to its authenticity or where it does not clearly identify the person signing.

Section 1.6 was amended to provide that black and white drawings may be faxed to the Office. Color drawings must be hand-carried or mailed.

Section 1.8(b) was amended to permit notifying the Office of a previous mailing or transmitting of correspondence when "a reasonable amount of time has elapsed from the time of mailing or transmitting of correspondence." With this amendment, applicants would not be required to wait until the end of the maximum extendable period for reply set forth in an Office action before informing the Office of the previously submitted correspondence and providing a duplicate copy and statement attesting to the previous timely mailing.

Section 1.10 was amended to address the effects of interruptions or emergencies in U.S. Postal Service "Express Mail" service. New section (g) was added to provide that any person who mails correspondence utilizing the "Express Mail" service, but has the correspondence returned due to an interruption or emergency in "Express Mail" service , may petition the Director to consider the correspondence as filed on a particular date in the Office.

Section 1.19(g) was amended to provide a mechanism for requesting copies of a document in a form other than that normally provided by the Office.

Section 1.27 was amended to add a new paragraph which stated that a security interest does not involve an obligation to transfer rights in the invention unless the security interest is defaulted upon.

Section 1.27 relating to the size standards for a small business concern was amended to refer specifically to the size standards set forth in 13 C.F.R. Section 121.801 through 121.805 instead of referring to all of 13 C.F.R. Section 121.

Section 1.52 was amended to allow compact disc files to be used if the total number of pages occupied by all tables exceeds one hundred. The CDs must be closed to further recording. Landscape orientation of a table should be specified on a transmittal letter. A 12-point font size was recommended.

A new Section 1.57 was added that provided that if all or a portion of the specification or drawings is inadvertently omitted from an application containing a priority claim to a prior-filed foreign application or a benefit claim for a prior-filed provisional, nonprovisional, or international application, that portion could be added by amendment even though there was no explicit incorporation by reference of the prior application. This rule change strongly benefits applicants. In the past, if a drawing page got stuck in a copier, for example, and didn’t get filed, it could not be added later without a loss of the filing date, if it was considered to contain new matter when compared to the rest of the application, unless the application incorporated another application by reference that contained that drawing. A priority claim was not sufficient. The applicant must supply a copy of the prior-filed application, and a translation into English if the prior-filed application was not in English, and must identify where the inadvertently omitted portion can be found in the prior-filed application. The Office may set a deadline for the amendment if they notice the omission, but in no case can the amendment be later than the close of prosecution. Proper incorporation by reference was limited to instances only where the word “incorporated by reference” or the root of the words “incorporate” and “reference” appear. A bright line test was intended.

Section 1.58 was amended to provide that the same table not be included in both the drawings and in the specification of an application.

Section 1.63 was amended to delete “authorization of agent” language.

Section 1.76 was amended to require that any application data sheet (ADS) contain seven specific headings, and to require all appropriate data for each section heading. If no ADS was originally filed but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS, even if it is the first-filed, must be titled “Supplemental Application Data Sheet.” Use of an application data sheet was strongly recommended when there was a change in the spelling of an inventor’s name. A supplemental ADS must be submitted with all changes indicated, preferably with insertions or additions indicated by underlining, and deletions by strike-through or brackets. If a newly filed ADS is inconsistent with information provided in another document submitted at the same time or earlier than the ADS submission, the newly filed ADS will control.

Section 1.78 was amended to permit the required reference to a prior application to be in multiple consecutive sentences at the beginning of the specification, after the title, rather than being limited to the first sentence of the specification. 1.78(c) was amended to clarify that the prior art exception under 35 U.S.C. Section 103(c) does not apply to double patenting rejections.

Section 1.83 was amended to provide that tables and sequence listings that appear in the specification are not permitted to be reprinted in the drawings

Section 1.84 was amended to remove the previous requirement for submission of a black and white copy of any color drawings or photographs. Further, each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet” so that the Office will recognize how to treat such a drawing for entry into the application.
Section 1.91was amended to add a paragraph which provides that a model or exhibit must be accompanied by photographs that show multiple views of the material features of the model or exhibit.

Section 1.94 was amended to provide that when notification is sent to an applicant, arrangements must be made by the applicant for the return of a model, exhibit or specimen, at applicant’s expense, in response to such notification. The Office may return the model at any time when it is no longer necessary for the conduct of business. The Office need not wait until the close of prosecution or later. Applicant is required to retain the returned model for the enforceable life of the patent. Applicant may be called upon to resubmit the returned model under appropriate circumstances, such as where a continuing application is filed. Where the model is perishable, the Office will be presumed to have permission to dispose of the item without notice to applicant.

Section 1.98 was amended to require a specified format for each page of an Information Disclosure Statement and to require that U.S. patents and application publications be listed in a section separately from citations of other documents. 1.98 was also amended to eliminate the requirement for a copy of each U.S. patent or U.S. patent application regardless of the filing date of the application in which the copies are to be cited.

Section 1.102 was amended to provide for a petition to make an application special without a fee when the application materially relates to a counter-terrorism invention. 1.102(c) set forth two bases for making an application special: (1) Applicant’s age or health; or (2) the invention is of a particular type (e.g., will materially enhance the quality of the environment, materially contribute to the development or conservation of energy resources, or materially contribute to countering terrorism). In view of the divergent subject matter, a petition to make special must identify the particular basis.

Section 1.105 was amended to indicate that if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is either unknown or not readily available rather than take a categorical position. Examples of where stipulations and interrogatories may be used to elicit technical factual information reasonably necessary for examination were provided, including applicant’s actual knowledge: (1) of the common technical features shared among all claims, or admission that certain groups of claims do not share any common technical features; (2) about the support found in the disclosure for means or step-plus-function claims; (3) of precisely which portions of the disclosure provide the written description and enablement support for specific claim elements; (4) of the meaning of claim limitations or terms used in the claims, such as what teachings in the prior art would be covered by particular limitations or terms in a claim and which dictionary definitions would define a particular claim term. Many patent attorneys strongly dislike this section as it could be used to shift the burden of examination from an examiner to the applicant and can cause file wrapper estoppel problems. So far, this section has not been frequently used by examiners.

Section 1.111 was amended to provide that a supplemental reply will not be entered as a matter of right except if it is filed within the period when action by the Office is suspended. The Office may enter a supplemental reply in certain specified situations such as if the reply is limited to cancellation of a claim, adoption of an examiner suggestion, placement of the application in condition for allowance, reply to an Office requirement made after the first reply was filed; correction of informalities; or simplification of issues for appeal.

Section 1.115 was amended to provide that a patent application publication may include preliminary amendments. A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application. A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.

Section 1.121 was amended to recite that any new sheet of drawings containing an additional figure must be labeled in the top margin as a “New Sheet.”

Section 1.137 was amended to clarify that when reviving a reissue application, a terminal disclaimer is not required.
Section 1.165 was amended to remove the requirement for a black and white copy of a color drawing or photograph.

Section 1.175 was amended to add a new paragraph requiring a new oath or declaration which identifies an error not corrected in an earlier reissue application be filed in any continuing reissue application that does not replace its parent reissue application.

Section 1.178 relating to reissues was amended to eliminate the requirement for physical surrender of the original letters patents.

Section 1.215 was amended to provide that patent application publication may be based upon amendments to the specification that are reflected in a substitute specification, provided that such substitute specification is submitted in sufficient time to be entered into the Office file wrapper before technical preparations for publication have begun.

Section 1.291 recited that in order for a protest submission to be matched with an application, it must include sufficient information to adequately identify the application for which the submission is being made. If the protestor is unable to identify the application by application number and filing date, but believe s such an application to be pending, the protest should be directed to the attention of the Office of Petitions along with as much identifying data as is possible, such as the name of an inventor. Protest s which do not comply with the rules may be returned or discarded at the sole discretion of the Office.

Section 1.311 was amended to provide that the submission of an incorrect issue fee or publication fee (after the mailing of a Notice of Allowance) would operate as a valid request to charge the correct issue fee to any deposit account identified in a previously filed authorization to charge such fees.

Section 1.324 was amended by adding an explicit reference to 35 U.S.C. Section 256 and its requirement that inventorship may be changed only by way of a request from all inventors together with assignees of the entire interest, or on order of a court. Reference to a petition to change inventorship was eliminated.

Various fees were changed. Multiple other changes were made.