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© 2009, Michael E. Kondoudis
As regular readers of this blog know, I advocate using the USPTO’s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution. I discussed my reasons for doing so in this earlier post. Basically, it is the USPTO’s official manual, so its instructions to Examiners are beyond dispute.
From time to time, when responding to an Office action or preparing a post for this blog, I come across interesting, useful MPEP sections that I think that other practitioners may not know about. Admittedly, these sections are not useful in everyday prosecution. Nonetheless, in certain, specific circumstances, these sections of the MPEP may be helpful.
Some help for older applications
Often, the prosecution of an application extends into third Office actions. In these cases, as well as “mature” cases, take note of §707.02 of the MPEP.
707.02 Applications Up for Third Action and 5-Year Applications
The supervisory patent examiners should impress their assistants with the fact that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.
Any application that has been pending five years should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution. In order to accomplish this result, the application is to be considered “special” by the examiner.
Some help for a generic rejection of a group of claims
We have all seen rejections in which an Examiner has erroneously characterized several independent claims, grouped them together, and generically rejected the group. In situations like this in which an Examiner has grouped claims together to make a generic, omnibus rejection, §707.07(d) of the MPEP may be of interest. That section warns:
707.07(d) Language to be Used in Rejecting Claims
*****
A plurality of claims should never be grouped together in a common rejection, unless that rejection is equally applicable to all claims in the group.
Some help for inventor filed (pro se) applications
The MPEP expressly instructs Examiners to offer specific help to pro se applicants by writing proposed claims. If you are a pro se applicant, keep §707.07(j) in mind.
707.07(j)(I) State When Claims Are Allowable
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.
Coming Next - More Help from the MPEP
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© 2009, Michael E. Kondoudis
An application data sheet (ADS) is a document that provides the bibliographic data for an application to the USPTO. The USPTO prefers, but does not require, the use of an ADS. An ADS can be advantageous, however, because it tends to reduce errors in the conversion/recordation of application data into the USPTO’s official electronic data record. While electronic filing via the USPTO’s EFS-Web has certainly reduced some errors, the USPTO relies on the uploaded documents (e.g., declaration, specification), rather than a user’s input, to create its official electronic record. For example, in a national stage application filed under 35 USC § 371, the USPTO might look to the publication of the international application for the title and to other documents for the listing of inventors and the correspondence address. The use of an ADS, because it provides this information in a single document and in a specified format, improves the accuracy of this conversion and the resulting electronic record.
Examples of What Can Happen Without an ADS
The USPTO’s procedures for converting the application data of paper applications and for recording electronic data into its official data record are surprisingly accurate, in view of the number of application data records it must create. Nonetheless, as with any system, errors do occur. And, even when they are remedied early in the prosecution process, they still take time and can cause processing delays. Worse yet, sometimes errors in the USPTO data records are not corrected. Consider the following U.S. patents, which could have benefited from an ADS:
And then there are:
Clearly, there are instances when an ADS would have helped the USPTO more accurately convert bibliographic information into an official data record.
The Requirements for an ADS
37 CFR § 1.76 governs application data sheets and sets forth specific requirements for each ADS. The following are some of the more noteworthy.
1. An ADS may be used in provisional and nonprovisional applications. 37 CFR § 1.37(a).
2. The USPTO offers a fillable pdf form (Form PTO/SB/14) on its website here. CAUTION - The USPTO ADS fillable form must be submitted as a text-based PDF file. A scanned version of the ADS fillable form will be rejected via EFS-Web because EFS-Web will not be able to auto-load scanned in data into backend systems. (Answer to USPTO.GOV EFS-Web Help FAQ # 252).
3. An ADS must be in a specific format. An ADS must be titled “Application Data Sheet” and must contain all of the following section headings, with any appropriate data for each section heading:
- Applicant information (i.e., the name, residence, mailing address, and citizenship of each applicant);
- Correspondence information (i.e., the correspondence address, which may be indicated by reference to a customer number);
- Application information (i.e., the title of the invention, a suggested classification, by class and subclass, the Technology Center to which the subject matter of the invention is assigned, the total number of drawing sheets, any docket number assigned to the application, the type of application);
- Representative information (i.e., the registration number of each practitioner having a power of attorney in the application);
- Domestic priority information (i.e., the application number, the filing date, the status, and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c));
- Foreign priority information (i.e., the application number, country, and filing date of each foreign application for which priority is claimed) (NOTE - providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55(a); and
- Assignee information.
37 CFR §§ 1.76 (a) and (b).
4. Providing domestic priority information in an ADS constitutes the specific reference required by 35 USC § 119(e) or 120, and 37 CFR §§ 1.78(a)(2) or 1.78(a)(5), such that this information need not otherwise be made part of the specification. 37 CFR 1.76 (b)(5).
5. The USPTO will interpret any blank section in an ADS to mean that there is no corresponding data for that label anywhere in the application. 37 CFR § 1.76(a).
6. In the event of an inconsistency between the ADS and other submitted documents, the timing of the submission of the conflicting information controls.
- When the conflicting information is submitted at different times - the latest submitted information governs regardless of how it is supplied, except that an oath or declaration governs inconsistencies in the naming of inventors or their citizenship.
- When the conflicting information is submitted at the same time - the ADS will govern when the inconsistent information is supplied at the same time, except that an oath or declaration governs inconsistencies in the naming of inventors or their citizenship.
37 CFR 1.76 (d)
The Law Office of Michael E. Kondoudis, PC
Washington DC Patent Attorney
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As many of you may have noticed, it has been several weeks since my last post. I’ve effectively been on a blogging “vacation” during this time, focusing almost exclusively on my practice. Over the past few weeks, I have been focused on opening a second, satellite office in Northern Virginia. It has been an exciting, challenging, and time-consuming process. I chose to respect your time and decided to wait to post substantive content rather than “filler” content just to keep the blog active. In any event, now that we have completed our expansion, I will return to blogging later this week.
May 29, 2009|