The USPTO recently issued a notice modifying the procedure for registered practitioners to show authorization to conduct an examiner interview.  Now, in addition to the submission of an executed power of attorney, the signing and submission of an Applicant Initiated Interview Request Form (Form PTO-413 A) will be treated as a proper indication of authorization to act in a representative capacity.  The USPTO’s notice follows this link.

Interviews are addressed in Section 713 of the Manual of Patent Examining Procedure and that section of the MPEP will be updated to reflect this change in Office procedure.

Additional Resources/Related Links
1.  Section 713.01 of the MPEP – “General Policy [for Interviews], How Conducted”
2.  Section 405 of the MPEP – “Patent Practitioner Not of Record”
3. The USPTO’s Applicant Initiated Interview Request Form (a fillable pdf)

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

When an Office action is issued by the USPTO, the time period for filing a reply begins.  If a reply is not filed within the period specified in the Office action, the application is technically abandoned by operation of Rule.  An applicant can usually buy an extension of up to five additional months, however, so long as the statutory limit of six months is not exceeded.

Extensions of time may be automatically authorized at the time an application is filed or requested as needed during prosecution via a petition.  In only a few circumstances is an actual petition required, however, because in most circumstances the mere payment of the appropriate extension fee is treated as a constructive petition for an extension.

The Rules
Extensions of time are controlled by 37 CFR 1.136 and discussed in Section 710.02(e) of the MPEP.  These should be one’s primary resources for petitions for extensions.

37 CFR 1.136 provides for two distinct procedures to request an extension. The appropriate procedure will depend upon the circumstances, but virtually all extensions are requested under 37 CFR 1.136(a), which permits extension of up to 5 months for a fee, with a few exceptions.  When the provisions of 37 CFR 1.136(a) are not available, however, an extension must be sought under 37 CFR 1.136(b), which is far more burdensome (section (b) extensions are only granted for sufficient cause and for a reasonable time).  Extensions under 37 CFR 1.136(b) are very rare, and the remainder of this post omits their discussion.

Regarding the need for a written request for an extension, 37 CFR 1.136(a)(3) provides that:

• a written request may be submitted in an application that is an authorization to treat any concurrent or future reply that requires a petition for an extension of time under 37 CFR 1.136(a) to be timely, as incorporating a petition for extension of time for the appropriate length of time;
• an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely; and
• submission of the fee set forth in 37 CFR 1.17(a) will be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely.

Here, 37 CFR. 1.136(a)(3) serves as a “safety net” when the appropriate extension fee is paid but an actual petition is not submitted.

The Petition Process
The process of obtaining an extension during ex parte prosecution in the USPTO is a fairly informal one. It is only necessary to petition for the extension and to pay the appropriate fee.   It is neither necessary to present reasons justifying the extension nor to request the extension in advance.  Also, this petition may even be combined with a concurrently filed response/submission (examples below).  Moreover, because of constructive petitions (discussed below), in most situations all that is required is the payment of the appropriate fee.

Petitions and Constructive Petitions
The necessity for an actual petition for extension turns on whether there is a concurrently filed reply.

When an applicant is only paying fees, an actual petition for an extension of time is required.  (See USPTO Advisory of 28 June 2010).

When an applicant is filing a concurrent reply, an actual petition is not required.  All that is necessary is the concurrent payment of the appropriate extension fee.  This is because the Office treats the submission of the extension fee as a constructive petition for an extension of time, pursuant to 37 CFR 1.136(a)(3) (in the event that the applicant did not previously authorize the USPTO to treat any reply that requires a petition for an extension of time as incorporating a petition for the appropriate extension of time).  A combined concurrent reply and petition may be prudent, however (see additional point #2 below).

Likewise, when filing a continuation application, a petition is not required.  Any necessary extension fee must, however, be submitted in the parent application.  This is because the filing of a continuing application within the extended time period is considered a concurrent reply.  Thus, a submission of the extension of time fee in the parent application will be accepted as a constructive petition for an extension of time if a continuing application is filed within the extended period.

Examples of Petitions From the MPEP

1.  The applicant herewith petitions the Director of the United States Patent and Trademark Office to extend the time for reply to the Office action dated ____ for ____ month(s) from ____ to ____.  Submitted herewith is a check for $____ to cover the cost of the extension.

2.  The applicant herewith petitions the Director of the United States Patent and Trademark Office to extend the time for reply to the Office action dated ____ for ____ month(s) from ____ to ____ . Please Charge my deposit account number ____ , in the amount of $ ____ to cover the cost of the extension. Any deficiency or overpayment should be charged or credited to the above numbered deposit account.

An Additional Example of Petition

3. Applicant hereby respectfully requests that the Office extend the period for filing a reply in the above identified application __ month(s), in accordance with the provisions of 37 CFR 1.136(a).  Applicants have submitted concurrently herewith the necessary fee of ___ [the fee required by 37 CFR 1.17(a)].

Examples of Petitions Combined as Part of a Response

4.   Applicant petitions to extend the time for response to the Office Action dated May 1, 2009, for two months from August 1, 2009, up to and including October 1, 2009. Payment of the required extension fee is submitted herewith. Please charge any deficiency or credit any overpayment to Deposit Account ____.  In response to the Office Action, please amend the present application as follows.

5. In response to the Office Action issued in this application and dated 03/03/2010, having a two-month extended due date for response set to expire on 08/03/2010, the fee for a two-month extension of time being paid concurrently herewith, please amend the present application as follows.

A Few Additional Points

1. The USPTO strongly prefers the filing of an actual petition whenever an extension of time is necessary, despite the USPTO’s treatment of a fee submission as a constructive petition.

2. Consider including in every petition for extension of time an authorization to charge a deposit account for any additional fees required.  If a petition for an extension of time requests an insufficient period of extension, but the period for reply may be further extended, it is Office practice to treat the petition for extension of time as requesting the correct period of extension – so long as the petition or application contains an authorization to charge extension fees or fees under 37 CFR 1.17 to a deposit account.  See MPEP § 710.02(e).

3. When a request for extension of time is granted, the due date is computed from the date stamped or printed on the Office action, as opposed to the original due date. See MPEP § 710.01(a).

4. Extensions of time in reexamination proceedings are governed by 37 CFR. 1.550 and require a showing of cause and must be requested before the expiration of time period for response.

5. An extension of time under 37 CFR 1.136 is not necessary when submitting a supplemental reply to an Office action if a complete first reply was timely filed in reply to the Office action.  710.02(e)

Additional Resources/Related Links
1.  The USPTO’s present fee schedule
2.  The USPTO recent advisory about petitions for extensions of time and EFS-Web
3.  The USPTO’s fillable Petition for Extension of Time form

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Many filing errors (e.g., the failure to file all of a document, the failure to pay a fee, or the unintended filing of an unrelated document) are correctable without penalty by a corrective electronic submission, if it is filed the very same day.  This post discusses a few of the filing errors correctable in this way.

In my last post, I discussed one advantage of electronic filing – the 25% application size discount.  Another advantage of electronic filing is that a registered user of the USPTO’s EFS-Web may view newly-filed applications in Private PAIR almost immediately after submission.  This permits a user to promptly review all of the documents filed in an application to confirm their completeness and accuracy.  This also provides an opportunity to correct many types of filing errors with another electronic filing on the same day.  By the same day, I mean up to 11:59 p.m. Eastern Time in the US (which can be GMT -4:00 or -5:00 depending on the time of year due to daylight savings time).

The following are some examples of filing errors that can be corrected with a same day filing:

1.  Oaths or Declarations – An applicant may later electronically file an executed oath or declaration on the same day of the electronic filing of a new application.  The oath or declaration will not be considered late in this circumstance and, consequently, the surcharge for the late filing of an oath or declaration will be avoided.

2.  Filing Fees – An applicant may later electronically submit fees (e.g., the basic filing fee, search and examination fees, an application size fee, or an excess claims fee) on the same day that a new application is electronically filed.  Here, the fees will not be considered late and thus a surcharge for late payment of the filing fees will not be required.

3.  Incorrect and/or Missing Part of a Specification, Claims and/or Drawings – An applicant may electronically file a correct/missing portion of the written description, any new and/or modified claims, and missing drawings as a preliminary amendment on the filing date of an application.  Such an amendment in a nonprovisional application is considered as part of the original disclosure.  See 37 CFR 1.115(a)(1).  But note that a preliminary amendment filed with a submission to enter the national stage of an international application under 35 U.S.C. § 371 is not considered part of the original disclosure under 37 CFR §115(a) because it was not present on the international filing date accorded to the application under PCT.  See MPEP § 714.01(e).  Also, keep in mind that amendments to the written description may require a substitute specification.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

There are many advantages to filing applications via the USPTO’s electronic filing system (EFS-Web).  One practical advantage is that the USPTO measures the size of an electronically filed application differently than if it were filed by paper.

An application filed under 35 U.S.C. 111 (this includes provisional, nonprovisional and design applications, and reissue applications) that exceeds 100 pages in total length is subject to an additional filing fee under 37 CFR 1.16(s) for each additional 50 sheets or fraction thereof.  Thus, an application consisting of 101 pages of specification and drawings incurs an additional fee and an application having 151 pages incurs an even greater additional fee.

The Size of an Application Filed Via EFS-Web is Discounted by 25%

The USPTO applies a 25% discount to the size of an electronically filed application.  So, for example, a 100-page application filed electronically is treated as a 75-page application for application size purposes.  See 37 CFR 1.52(f)(2) and MPEP § 607.  This means that an applicant may file an application up to 133 pages in total length and avoid the size fee, so long as the application is filed electronically.

A Few Caveats

1.  The application size discount of 37 CFR 1.52(f)(2) for EFS-Web filings does NOT apply to national stage submissions under 35 U.S.C. § 371.  See MPEP § 1893.01(c).

2.  Sequence listings and any computer program listing submitted electronically are excluded when determining the application size fees under 37 CFR 1.16(s), so long as the listing is submitted in ASCII text as part of an associated file of the application.  See 37 CFR 1.52(f)(2).  Conversely, sequence listings or computer program listings submitted as PDF files are NOT excluded and are counted along with the specification and drawings.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

The USPTO has announced a new plan to increase the availability of its patent electronic filing system, EFS-Web, by providing a new contingency option when the primary portal to EFS-Web experiences an unscheduled outage. Previously, the entire EFS-Web system was unavailable to the users during such an outage. The new EFS-Web contingency option will permit users to sign-on as unregistered users to file new applications, national stage submissions under the Patent Cooperation Treaty (PCT) submitted with the basic national fee necessary to enter the national stage, requests for reexamination, and certain petitions, during unscheduled outages.

This new EFS-Web contingency option will only permit users to electronically file the following items as unregistered EFS-Web users:

1. Provisional patent applications;

2. Nonprovisional utility and design patent applications (including reissue utility and design patent applications);

3. International applications under PCT Article 11 for filing in the United States Receiving Office;

4. National stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage;

5. Requests for ex parte and inter parties reexaminations for utility and design patents;

6. Petitions to make special based on age using the EFS-Web SB130 form;

7. Petitions to accept an unintentionally delayed payment of maintenance fee using the EFS-Web SB66 form; and

8. Petitions to make special under the accelerated examination program.

The Federal Register Notice is available here.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Have you ever had a question about an application in prosecution but have been unable to find the correct person to assist you?  Have you ever been unsuccessful in obtaining assistance from an examiner or Supervisory Patent Examiner?  If so, you will want to take note of the USPTO’s new Ombudsman Pilot Program.

The Ombudsman Pilot Program is designed to assist in getting the process back on track when there is a breakdown in the normal prosecution process.  This program is not intended to circumvent normal communication between applicants and/or their representatives and examiners or SPEs, however.  Rather, it is intended to serve as an additional resource to practitioners and applicants.

The Ombudsman Pilot Program began yesterday and will continue for at least 12 months.

>> Click here to visit the homepage for the Ombudsman Pilot Program Ombudsman, which includes an electronic contact form.

>> Click here to view some FAQs on the Ombudsman Pilot Program.

>> Click here to download the Federal Register notice for the Ombudsman Pilot Program.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Introduction

“S-signatures” have been accepted by the USPTO for several years now. An S-signature is an electronic signature betwen forward slashes and includes any signature made by non-handwritten means (i.e. electronic or mechanical).  See MPEP 502.02 and 37 CFR 1.4(d)(2). This type of signature was part of the changes made in the USPTO to support the implementation of its 21st Century Strategic Plan and makes using the USPTO’s EFS-Web far more efficient and secure.

There is no one acceptable form of an S-signature.  Rather, so long as the requirements for S-signatures are satisfied, almost any S-signature will be accepted by the USPTO.

The Rules

37 CFR 1.4(d)(2) sets forth the following four requirements for a valid S-signature:

1. It must consist of only letters and/or Arabic numbers, along with appropriate spaces, commas, periods, apostrophes, or hyphens for punctuation;
2. It must be placed between forward slashes;
3. The person signing must insert his or her own signature; and
4. The name of the person signing must be printed or typed immediately adjacent to the S-signature, and be reasonably specific, so the identity of the signer can be readily recognized. In addition, the S-signature of a registered patent practitioner must be accompanied by a registration number.

This Rule places restrictions on the form of the S-signature.  It does not restrict content, however. Consequently, a wide variety of s-signature formats are acceptable. In fact, the USPTO instructs employees who review S-signatures not to reject or refuse correspondence based on the content of the S-signature so long as it complies with the broad criteria set forth above.

Examples

Example 1 – An S-signature for a pro se applicant

Respectfully submitted,

/John Smith/
John Smith

Example 2 – An S-signature for registered practitioner

Respectfully submitted,

By: /John Smith/
John Smith
Reg. No. 01234

Example 3 – An S-signature for registered practitioner

Respectfully submitted,

By: /John Smith, #01234/
John Smith

Other examples of acceptable (and unacceptable) S-signatures can be found here.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

On January 29, 2010, the USPTO began participating in a new Patent Prosecution Highway (PPH) pilot program with the European and Japanese Patent Offices, in their capacities as PCT International Searching and/or Preliminary Examining Authorities.  Under this new PCT-PPH program, certain PCT work product from either of these patent authorities acting in its PCT capacity may serve as the basis for a petition to make special in the USPTO.

The fundamental requirements to qualify are that:

(1) there must have been an indication in the corresponding PCT application that at least one claim has novelty, inventive step, and industrial applicability.  This indication must have come in the form of:

(i) a written opinion from the ISA;

(ii) a written opinion from the IPEA; and/or

(iii) an IPER from the IPEA; and

(2) the corresponding U.S. application must contain (or be amended to contain) claim(s) that sufficiently correspond to the claim(s) that were indicated as having novelty, inventive step, and industrial applicability.

Accordingly, effective immediately, Applicants may request participation in the PCT-PPH pilot program by filing the appropriate form (Form PTO/ SB/20PCT-EP or Form PTO/SB/20PCT-JP) via EFS-Web. The USPTO instructs Applicants to index the form as “Petition to make special under PCT-Patent Pros Hwy”.

Information about all of the current PPH programs (with forms) can be found on the USPTO’s website here.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Introduction

Most actions during prosecution of a patent application in the USPTO are eventually subject to quasi-judicial review by an appeal to the Board of Patent Appeals and Interferences. The classic example of an action that is subject to this type of review is an art (§102 and/or §103) rejection of a claim.

Other actions, however, are not subject to review by an appeal. Rather, the only relief available is administrative review. An example of this type of action is a review of a restriction requirement. This administrative review is conducted, in part, through petition practice.

Still other actions, such as the revival of an abandoned application, may only be requested by petition.

The Starting Points for Any Petition

The Director of the USPTO has delegated to various USPTO officials the authority to decide certain petitions.  The various delegations are set forth in Chapter 1000 of the MPEP.

The specific form and content of many common petitions are set forth in the Rules and the MPEP. For example, the requirements of a petition to revive an abandoned application are set forth in 37 CFR 1.137 and MPEP 711.03(c).

37 CFR 1.181(b) sets forth the general requirements for the content of a petition. This Rule, along with section 1000 and any other relevant section(s) of the MPEP, should be primary resources for anyone drafting a petition.

The Requirements

Every petition in the USPTO must satisfy the following 5 requirements:

1. The petition must be in writing (see 37 CFR 1.2).

Business with the USPTO should almost always be transacted in writing. Enough said.

2. The petition must: contain a statement of relevant facts; identify the issue(s) or error(s) presented for review; and state the action or relief sought by the petition. (see 37 CFR 1.181(b)).

Every petition should be as complete as possible and provide all of the evidence necessary for the rendering of a decision.

3. The petition must be accompanied by any required fee (see 37 CFR 1.181(d)).

The Office may properly dismiss any petition for lack of or insufficient fee. Be sure to consult the USPTO’s current fee schedule here.

4. The petition must be timely filed in compliance with 37 CFR 1.181(f), or as required in a specific statute or regulation.

As a general rule, a petition must be filed within 2 months from the date the action complained of occurred or it may properly be dismissed as untimely.

5. The petition must comply with any specific requirements as provided by statute, regulation or USPTO policy.

Review any applicable statute, regulation or USPTO policy relating to the issue being petitioned to determine if there are other requirements specific to that petition.

Final Points

1. Petitions do not stay periods for reply – The mere filing of a petition will not stay the period for replying to an examiner’s action that may be running against an application or act as a stay of other proceedings. (37 CFR 1.181(f)).

2. Be sure to separate each distinct subject, inquiry or request into a separate petition – different branches or sections of the USPTO may consider/decide different matters. Filing separate papers will help to avoid confusion and delay in answering papers dealing with different subjects (see 37 CFR 1.4(c)).

3. Send the petition to the correct decision maker – a petition should be directed to the USPTO official delegated the authority to decide that petition. (see MPEP Chapter 1000).

4. The two-month period to file a petition is not extendable. (37 CFR 1.181(f)).

5. The USPTO provides several fillable pdf petition forms on its website here.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

This post discusses a less common but nonetheless important point that my earlier post on this subject did not – the mechanics of how to claim priority to a foreign patent document, along with a few examples.

Generally, the approach for claiming the benefit of foreign priority is similar to claiming domestic priority. There are a few more requirements to keep in mind, however.

THE RULE AND REQUIREMENTS

The controlling rule here is 37 CFR § 1.55, entitled Claim for Foreign Priority, which states:

An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

Section 1.55(a) goes on to impose a non-extendable time limit to make the claim, stating that:

the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

Pursuant to § 1.55, the claim for the benefit of foreign priority must satisfy a few more requirements than a claim for domestic priority. In particular, the claim must identify the foreign application for which priority is claimed by specifying:

1. the application number of the priority document;

2.  the country (or intellectual property authority) with which the priority document was filed

3. the day, month, and year the priority document was filed.

Also, of course, the foreign patent authority must have reciprocity with the USPTO, there must be an identity of inventorship, and the U.S. application must almost always have been filed within 12 months from the filing date of the priority document.

A FEW EXAMPLES

This application claims priority under 35 U.S.C. § 119 to German patent application DE 100 21 175.7, filed January 4, 2005, the disclosure of which is incorporated herein by reference.

This application is based on and claims the benefit of priority from Japanese Patent Application No. 5-234567, filed on October 15, 2007, the contents of which are incorporated by reference.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

This post discusses some of the mechanics involved in securing a right of priority to an earlier filed application, provides some examples of acceptable claims of priority, and ways to correct a failure to make the required claim.

BACKGROUND

When certain conditions are satisfied, a patent application is entitled to the benefit of the filing date of an earlier filed application. These specific conditions are set forth in 35 U.S.C. § 120 and 37 CFR 1.78(a)(1) – (a)(3) for prior nonprovisional applications and 35 U.S.C. 119(e) and 37 CFR 1.78(a)(4) – (a)(6) for provisional applications.

Generally, the Rules require that an Applicant make a “specific” reference to the prior-filed application in either:

1. the specification; or

2. an application data sheet (ADS).

The Rules do not articulate any particular form of the required “specific” reference. They do, however, dictate that the “specific” reference:

1.  identify the prior-filed application by application number; and

2. identify the specific relationship of the applications (i.e., continuation, divisional, or continuation-in-part).

Also, when there is a claim to a chain of applications, the relationship must be stated for each application, to establish the required co-pendency throughout the chain.

EXAMPLES

Example #1 – Benefit Claim to a Nonprovisional Application

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. patent application no. 12/123,456, filed December 12, 2007.

Example #2 – Benefit Claim to Nonprovisional Applications

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation-in-part of Application No. 12/123,456, filed 21 March 2007, and is also a continuation-in-part of Application No. 12/234,567, filed 31 March 2007.

Example #3 – Benefit Claim to Chain of Nonprovisional Applications

If the benefit claim involves a chain of nonprovisional applications, then the specific reference must also include the interrelationships of the applications relative to each other, as a continuation, divisional, or continuation-in-part, to establish co-pendency throughout the entire chain.

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 12/123,456, filed 21 March 2007, which is a divisional of Application No. 11/123,456, filed 21 March 2006, which is a continuation-in-part of Application No. 10/123,456, filed 1 January 2006.

Benefit Claims to International (PCT) Applications

When the specific reference is to an international application, an Applicant is required to:

1. Identify the International application by International application number and International filing date (not the § 371(c) compliance date); and

2. provide any specific interrelationship of multiple applications, when present.

Example #4 – Benefit Claim to a National Stage (§ 371) application

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 10/123,456, which is the National Stage of International Application No. PCT/US2007/000004, filed January 1, 2007.

Example #5 – Benefit Claim to a Bypass Application

CROSS-REFERENCE TO RELATED APPLICATION

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008.

Note: do not use the §371(c) compliance date for bypass applications.

Example #6 – Benefit Claim to an International Application (Benefiting From an Earlier Nonprovisional)

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008, which is a continuation of U.S. Application No. 10/123,456, filed February 1, 2006.

Example #7 – Benefit Claim to Provisional Applications

Here again, a specific reference to the prior-filed application is required in the first sentence of the specification or an ADS. This specific reference need not state the relationship between the nonprovisional application and the provisional application.

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. Provisional Application No. 60/123,456, filed March 1, 2008.

THE TIME LIMITS AND CORRECTION

The Rules limit the time in which an Applicant may make a benefit claim. 37 CFR. 1.78(a) requires that any claim of priority must be made before the later of four months from the actual filing date or the date on which the national stage commenced, or sixteen months from the filing date of the prior-filed application.

The Impact of Failure To Make A Timely Benefit Claim

The failure to timely submit the “specific” reference is considered a waiver of any benefit claim. The failure to make a timely claim is correctable, but this correction can be relatively expensive.

How Do You Know If A Claim Has Been Correctly Acknowledged by the USPTO?

The Office, via the Official Filing Receipt, notifies Applicants that a benefit claim may not have been recognized or was not accurately recognized. For this reason, it is important to review every Official Filing Receipt, which is usually provided shortly after the filing of an application so as to provide sufficient opportunity to make/correct a benefit claim within the specified time.

Timely Correction

During the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

1. filing a request for corrected filing receipt, and

2. making the required “specific” reference.

Here, the required “specific: reference can be made either:

by filing an amendment to the specification or by filing an ADS; or

by submitting a copy of the amendment or ADS, if the claim was previously submitted.

Note – There is an important departure from standard USPTO practice here. A preliminary amendment to merely add a claim of priority does not require a substitute specification. See MPEP 714.01(e). The Office would prefer that claims are made via an ADS, however.

Untimely Correction

After the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

1. filing a petition to accept an unintentionally delayed claim under rule 1.78(a) and the surcharge under rule 1.17(t) (presently 1500.00 USD); and

2. making the required specific reference (including the relationship of the non-provisional applications and identification of any intermediate application which directly claims the benefit of the provisional application).

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

In my earlier post in this series, I discussed a few sections of the MPEP that I have found to be useful in some specific circumstances.  This post discusses a few more.

Some Help For When Patentability Arguments Are Ignored

We have all received Office actions in which the Office seems to have ignored patentability arguments.  In these situations, take a look at the following sections of the MPEP:

707.07(f) Answer All Material Traversed
In order to provide a complete application file history and to enhance the clarity of the prosecution history record, an examiner must provide clear explanations of all actions taken by the examiner during prosecution of an application….Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.

706 Rejection of Claims
After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action. Where the examiner determines that information reasonably necessary for the examination should be required from the applicant under 37 CFR  1.105, such a requirement should generally be made either prior to or with the first Office action on the merits and should follow the procedures in MPEP §   704.10 et seq.

*****

(emphasis added).

Some Help When There Appears To Be A Policy of Rejecting All Claims

I have been asked on more than one occasion to offer suggestions on how to respond to Examiners who appear to simply refuse to allow claims.  This happens from time to time in various art groups, for a variety of reasons.  While there is no “silver bullet” so to speak, the MPEP does provide some help.

706 Rejection of Claims

*****
Although this part of the Manual explains the procedure in rejecting claims, the examiner should never overlook the importance of his or her role in allowing claims which properly define the invention.

Some Help For When Office Actions Do Not Apply Cited Art

For any number of reasons, some Office actions fail to apply cited art against the claims, except to say that the cited patent teaches or suggests every feature of the claims.  In these situations, take a look at 37 CFR 1.104(c)(2), which is replicated in § 707 of the MPEP:

707 Examiner’s Letter or Action

*****
(2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

(emphasis added).

Some Help for Pro Se Applications

For all of you inventors out there prosecuting your own cases, keep the following section of the MPEP in mind:

707.07(j)(I) State When Claims Are Allowable

I.    INVENTOR FILED APPLICATIONS
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.

This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it will be expected to be applied in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

The USPTO has unveiled a series of proposals that would bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. The proposals were developed by a task force comprised of senior USPTO patent managers and representatives of the Patent Office Professional Association (POPA), the union that represents patent examiners.

The proposed changes would be the most significant in more than 30 years. The last revision to the count system was in 1976.

According to the USPTO, the proposals provide the following:

• Improved working conditions: While the proposal increases the time examiners have overall, it provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. This change in incentives will ultimately encourage examiners to dispose of applications more quickly.
• More time for examiners: The proposed changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs)* and providing consistent credits for transferred or inherited amendments.
• Process changes:  These changes will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.

The USPTO’s press release on the proposed changes can be found here.

The USPTO’s full proposal can be found here.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Introduction

USPTO rules require that every non-provisional patent application include an Abstract.  This Abstract is a concise summary of the invention disclosed in the application.  This summary enables the Office (and the public) to quickly determine the nature of the disclosed subject matter.

Although only a summary, it is prudent to draft an Abstract with care. The Abstract is a part of a written disclosure of the application and Federal Courts may properly rely on an Abstract to construe claims.  For this reason, it is beneficial to draft an Abstract at least as broadly as the broadest independent claim.

The many requirements for a patent Abstract are set forth in 37 CFR 1.72(b) and MPEP § 608.01(b). These respective sections of the Rules and the Manual of Patent Examination Procedure should be an Applicant’s primary resources.  The USPTO may properly object to any Abstract that does not satisfy all of the requirements and may require correction by the applicant.  The following are the five most common reasons the Office will object to an Abstract:

1.  The Abstract is not on a separate sheet
A proper Abstract commences on a separate sheet that does not include either other parts of the application or any other material.  Preferably, an Abstract is presented after the claims, which preferably follow the Specification.

2.  The Abstract is too long/too short
A proper Abstract is between 50 and 150 words and does not exceed 15 lines of text.

3.  The Abstract includes improper language
A proper Abstract avoids the legal phraseology commonly found in patent claims, such as “means” and “said.”  Instead, the language used should encompass that which is new and be clear and concise.  Thus, a proper Abstract also avoids phrases that can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc.

Remember – the content of an Abstract should enable a reader, regardless of his or her degree of familiarity with patents, to determine quickly whether there is a need to consult the full patent text.

4.  The Abstract is non-narrative/non-descriptive
A proper Abstract neither discusses purported merits or speculative applications of a disclosed invention nor does it compare the invention with prior art. Rather, a proper Abstract efficiently describes the disclosed subject matter and encompasses what is believed to be novel. Accordingly, extensive mechanical and design details of an apparatus should not be included.

5.  The Abstract is more than one paragraph
A proper Abstract is a single paragraph within the range of 50 to 150 words.

Abstract Drafting Suggestions

1.  An Abstract is part of the written disclosure of an application and can be used to construe (and likely limit) the claims in future litigation.  So, when drafting this portion of an application always keep in mind Miranda – “anything you say can and will be used against you in a court of law.”

2.  A common drafting strategy is to incorporate the language of the broadest independent claim, without the “patentese” (pure claim terminology).  This strategy tends to produce an Abstract that is both adequately broad and that avoids characterizations of the invention.  Moreover, this strategy is efficient because it leverages the care and effort used to draft the independent claim on which the Abstract is based.

3.  When an invention is of a basic nature, the Abstract may be directed to the entire disclosure.

4.  When an invention is an improvement of an old apparatus, process, product, or composition, the Abstract preferably focuses on the improvement.

5.  When an invention is in the nature of compounds and compositions, the abstract preferably sets forth both a process for making and a use of the compound or composition.

6.  Where applicable, an Abstract should include the following:

(1) if the invention is a machine or apparatus, its organization and operation;
(2) if the invention is an article of manufacture, its method of making;
(3) if the invention is a chemical compound, its identity (i.e., the general nature of the compound, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas”) and use;
(4) if the invention is a mixture, its ingredients; and
(5) if the invention is a process, its operations or steps.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

The USPTO has revised its schedule of fees to reflect upward revisions of some PCT fees to foreign patent offices.  The fee increases will go into effect on October 2, 2009.  The revised fee schedule is available here.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Gene Quinn of IPWATCHDOG.COM has a troubling an interesting post about the USPTO from the inside.  For anyone curious as to why the allowance rate has dropped below 50% (it is presently at 42%), and why the quality of examination has declined so much in recent years, I recommend taking a few minutes to read Mr. Quinn’s post entitled “Perspective of an Anonymous Patent Examiner“.  A few nuggets from the anonymous Examiner:

[The USPTO's] “reject, reject, reject now” policy is encouraged by management’s policy of issuing a written warning on an examiner’s permanent file for allowance error percentage above 10%.

Additionally, there is a lack of motivation to get cases allowed, because there is no incentive for the examiner to do the extra work required to arrive at claim language which can be allowed.

Over the years, I too have heard many of the same views from multiple Examiners.  It is little wonder why morale at the USPTO is so low.  I leave you with Mr. Quinn’s final question from his post, which I second:

With so many Czars and hundreds of billions of dollars being thrown around Washington, DC, can’t we get just a little attention at the agency that is tasked with promoting the progress of science and useful arts?  I don’t think that is too much to ask for, is it?

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

This is the second part of a two-part discussion of RCEs and the submission requirement.  In my earlier post here, I discussed legal principles about RCEs and some RCE strategy.  This post presents and discusses some additional strategic uses for RCEs beyond reopening/continuing prosecution after a final Office action.

An RCE can be used to have art considered and made of record when the statement under 37 CFR § 1.97(e) is required but cannot properly be made.

Consider a circumstance where an Applicant seeks to have art considered by the Office (i) after a final Office action and (ii) more than three months after the art was cited in a corresponding foreign application.  If the Examiner declines to consider the art (the Rules do not prohibit the Examiner from considering art at any time during prosecution), filing an RCE with an IDS will require the USPTO to consider the art as a matter of right.

In this circumstance, the Applicant may consider foregoing a Response After Final and file an RCE with two submissions, a fully responsive Response and an IDS.

Two Comments About RCEs and IDSs
1.  Keep in mind that 37 CFR 1.97 specifies when an IDS shall be considered by the Office.  Thus, compliance with this rule ensures consideration of submitted art as a matter of right.  A failure to satisfy the requirements of this rule does not preclude the consideration of the cited art, just consideration as a matter of right.

2.  The three-month window of 37 CFR 1.53(b) (an IDS will be considered if filed within three months after the filing date) does not apply to RCE applications.  An IDS after an RCE will, however, be considered without a statement and fee so long as the IDS is filed before the first action after the RCE.

An RCE can be used to withdraw an appeal.

After a Notice of Appeal, an Applicant/Appellant sometimes (i) decides to amend claims or (ii) discovers new art that is material to patentabilty.  In either of these situations, filing an RCE would withdraw the appeal and reopen prosecution so that the amendments or art can be made of record.

An RCE can be used to withdraw an allowed application from issue.

After a Notice of Allowance, but before payment of the Issue Fee, an Applicant begins to evaluate whether the claims are of adequate scope or whether additional claims are warranted.  If there is a risk of the application issuing, an RCE will stop it.  In this circumstance, filing an RCE with a submission that merely amends the Abstract to change as little as a single word can be used to buy the Applicant time to decide whether to permit the application to issue.

An RCE may also be used to avoid paying an Issue Fee but maintaining pendency  when it is unclear whether an Applicant wants to pay an Issue Fee.

Here again, a submission that merely amends the Abstract to change as little as a single word can be used.

A Comment on Reporting Issue Fees
To avoid the latter situation illustrated above in which it is unclear whether the Applicant wants to pay the Issue Fee, one might consider a paragraph such as the following in a Notice of Allowance and Notice of Allowability reporting letter:

The Issue Fee and Publication Fee are due no later than January 1, 2009, and we will pay those fees on the due date unless we receive your instructions otherwise.  In that regard, if you instruct us to file a request for continued examination (RCE), we must have your proposed amendment or other submission before the due date.

Such a paragraph makes clear that the fees will be paid in the absence of further instructions.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

This post discusses requests to withdraw finality.  Under the USPTO’s policy of compact prosecution discussed here, a second office action may properly be made final under most circumstances.  The circumstances are set forth in §706.07(a) of the Manual of Patent Examining Procedure (MPEP), entitled Final Rejection, When Proper on Second Action, which states:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

The MPEP, in §706.07(d), also provides a remedy when a final Office Action is issued and the conditions of §706.07(a) have not been satisfied.  That section, entitled Final Rejection, Withdrawal of, Premature, provides:

If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.

The following are a few examples of successful Requests to Withdraw Finality.

—- EXAMPLES —-

This first example was submitted in response to a final Office action that mischaracterized a claim.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicants are in receipt of a final Office Action mailed March 13, 2007, in this application. Applicants respectfully request that the finality of the subject Office Action should be withdrawn because the Office has expressly and erroneously misinterpreted claims and, as a result, has failed to consider the patentability arguments presented in the most recently filed Amendment. Further, the Office’s express, incorrect claim characterization precludes the Office Action from addressing the merits of the argument presented concerning one of the presented independent claims.

In support of this request, Applicants state the following:

1. On December 20, 2006, Applicants filed an Amendment that presented independent claim 15 with the following claim recitation:

a disk protector disposed at an outer edge of the disk damper….

2. In response to the Amendment filed December 20, 2006, the Office mailed a final Office Action on March 13, 2007, which explained that all rejections were maintained because:

Applicant argues the limitations which are not in the claim language” because Applicants only claim “…arranged/disposed along an outer edge of the disk damper…Applicant does not claim “… at an outer edge of the disk damper.”

(Office Action, page 3).

3. The aforementioned statement of paragraph 2 is manifestly incorrect and without basis in fact. Indeed, Applicants’ independent claim 15 expressly recites “at.”

4. Section 707.07(f) of the Manual of Patent Examining Procedure (MPEP) instructs that:

Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.

5. The Office repeated the rejections of all of the claims. The Office, however, neither “took note” of Applicants’ argument nor “answered the substance” of Applicants’ argument. Thus, the final Office Action is deficient because the Office failed to satisfy the requirements of MPEP § 707.07(f).

6. Also, it is submitted that the outstanding Office Action has taken an improper and unreasonable interpretation of claim terms. And, for this additional reason, Applicants respectfully submit that the outstanding Office Action is improper.

In view of the foregoing, Applicants respectfully request withdrawal of the finality of the outstanding Office Action and further request a new non-final Office Action that addresses the merits of claim 15.

This second example was submitted in response to a final Office action that first rejected features that were previously presented for examination.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejects independent claim 1 on new grounds.  As the Office itself states, “Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action.”  (Final Office Action, page 6).

2.  The sole amendment to independent claim 1 was made in an Amendment filed October 25, 2008.  In that Amendment, Applicant cancelled original claim 2 and amended independent claim 1 to recite the features of cancelled claim 2.

3.  The features of claim 2 that were added to independent claim 1 were previously presented for examination.  Thus, the added features could have been rejected in an earlier Office action but were not.

4.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing that:
Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement….

5.  Applicant submits that because the features added to independent claim 1 were presented for examination in the preceding Office Action, the new ground of rejection of claim 1 made in the final Office Action cannot reasonably be said to be either necessitated by a claim amendment or an Information Disclosure Statement.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the interests of fairness, the finality of the final Office Action should be withdrawn.

This final example was submitted in response to a final Office action that rejected a claim for the first time.

REQUEST FOR WITHDRAWAL OF FINALITY <

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds For Request
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejected independent claim 20.

2.  The non-final Office Action that immediately preceded the final Office Action did not reject independent claim 20.

3.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing that:

Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement….

4.  Applicant submits that the rejection of independent claim 20 is a new ground of rejection.  Also, because Applicant neither amended claim 20 nor filed an IDS between the subject non-final and final Office actions, the conditions required by MPEP § 706.07(a) cannot yet be satisfied.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the Office’s policy of compact prosecution, the finality of the final Office Action should be withdrawn.

Two last comments.  First, I prefer to file these Requests as separate, stand alone documents.  Second, each of the examples in this post is based on successful Request.  They are by no means appropriate for every final Office action.  But, when finality is premature, this type of Request can be an effective remedy.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Listings of claims are required in most, but not all responses to Office actions.  This post discusses when they are required and why it may be prudent to include them even when they are not.

The Rules
The manner of making amendments in a patent application is governed by 37 CFR. 1.121 entitled “Manner of Making Amendments in Applications”.  Sections (C) and (C) (1) of that rule addresses claim listings, and state:

(c) Claims. … Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application.

(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.

Thus, every filing that includes a change to a claim, a cancellation of an existing claim, or an addition of a new claim, must include a complete listing of all claims ever presented in that application.

A failure to include a listing of the claims when required renders a filing non-compliant.

What about filings in response to an Office action in which no claim changes are made and a listing of the claims is not required (e.g., a Response to a Restriction Requirement of a Request for Reconsideration)?  I have seen such filings prepared both ways; with and without a listing of the claims and I suppose that a case could be made for either approach.  I suggest, however, that it may be a better practice to include a listing of the claims in every response, regardless of whether or not it is required.  Here are a few reasons why.

1. Including a Listing of Claims Makes Examination Easier. When a response does not include a listing of the claims, anyone reviewing the arguments presented will have to refer to at least one other document (e.g., a previous amendment or the original application) to find a listing of the claims.  In other words, omitting a listing requires the reader to sift through the file wrapper to find a listing of the claims.  At a minimum, this is inefficient and inconvenient.  I prefer not putting an Examiner through this trouble.  The Office’s current production quotas are difficult enough for an Examiner to meet.
The bottom line: making the Examiner’s job easier is in everyone’s best interests and can only help improve the quality of examination.  Besides, every Applicant can benefit from some Examiner goodwill.

2.  The USPTO Encourages Inclusion of a Claim Listing In Every Response.
The following is from a frequently asked questions page on the USPTO Website about current amendment practice:

(A10)Q:   May I submit a complete claim listing in a reply when I am not making any changes to the claims, such as responding to a restriction requirement or merely arguing a rejection?A:  Yes. Although a complete claim listing is only required whenever changes are made to any claims, one may be submitted in a reply to an Office action where no changes are being made. It is beneficial to the examiner (and all viewers of the electronic file) to have the most up-to-date set of claims in the most recent paper submitted by the applicant. Note that the claim listing in this situation would not include any claims with markings or any claims with the status identifiers of (new) or (currently amended).

3.  Including a Listing of Claims Promotes Accuracy.
The inclusion of a listing of the claims in every filing makes identifying the most current version of the claims easier for everyone who may pick up the file.   This, in turn, tends to reduce: errors in drafts prepared by support staff; the time needed to review such drafts; and non-compliant amendments.

4.  Including a Listing of Claims Promotes Faster (and Smoother) Review of Work Product.
Including a listing of the claims in every response makes review easier.  And, an easier review tends to be a shorter review.  Shortening the time required for review lessens the overall expense for preparing a filing, especially when the reviewer has a higher billing rate than the practitioner who prepared the filing. Besides, making review easier on the reviewer seems to make that review go a little smoother for the practitioner.

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© 2008, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

In my opinion, quality patent prosecution can often be as challenging as quality patent application drafting, which is one of the more challenging tasks in the legal profession. The challenge in patent prosecution is not in obtaining allowed claims, but rather in obtaining the broadest claims that have the most value. That is, to convince an examiner of the patentability of the broadest claims while generating the least amount of prosecution history.

In my career, I have often been asked to consult on or take over the prosecution of applications that have already been through a significant amount of prosecution. Not uncommonly, I have been surprised by the amount of avoidable estoppel that I find, which is usually the result of thoughtless and/or careless prosecution. That is, not exercising thoughtful caution when crafting remarks, unnecessarily/inaccurately characterizing the claims or “the invention,” and/or crudely articulating patentability arguments. In essence, prosecution as clumsy as a bull in a china shop.

When prosecuting a patent, I advocate that one take the approach not unlike that of a plastic surgeon. That is, prosecuting with a definite and purposeful focus on the end result, the prosecution history. This means prosecuting with one eye focused on the examiner and the other eye focused on possible future litigation in which the prosecution history will be scrutinized by litigators, juries, and federal courts. This requires care, thoughtfulness, accuracy and caution when amending claims and crafting remarks. In this way, like plastic surgery, patent prosecution is an art.

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© 2007, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com