Living with the New Rule Package

Changes to Patent Practice and Procedure Effective 12/1/97

Final Rule, 62 Fed. Reg. 53131 (October 10, 1997); 1203 Off. Gaz. Pat. Office 63 (October 21, 1997)
Section 1.53(d) change, 63 Fed. Reg. 5732 (Feb. 4, 1998); 1207 Off. Gaz. Pat. Office. 83 (Feb. 24, 1998)

The following suggestions are made so as to avoid problems which we have noticed since the changes to the patent rules went into effect on December 1, 1997.

1. Application Filing:

(a) Use PTO transmittal forms (Rev 2/98) or modified forms that conform to ours. While applicants are not required to use the Office's application transmittal and fee transmittal forms, and the Office's forms may be modified, our forms contain information that we would like to have and can more easily recognize the presence of when submitted in the organized manner of the form rather than submitted haphazardly on various papers.

(b) CPA Filing under § 1.53(d):

• File a CPA by a Fax transmission of the 2 page CPA Request Transmittal form. §1.6(d)(3).
• Separately Fax any multi-page preliminary amendment. A transmission problem is less likely with the 2 page CPA Request than with a multi-page paper. A preliminary amendment is not a time sensitive document like the filing of a CPA application and the preliminary amendment can come in after the CPA application is filed.
• When Fax filing, print a Fax transmission report within 1 day and save, so relief under § 1.6(f) is possible if Fax is lost by Office.
• Continuation CPAs are treated as an "amended" case by examiner so file any desired preliminary amendment with the CPA Request, or soon thereafter to avoid a first action final rejection.
• CPA and Continued Prosecution Application are unique terms for a (new application) filing only under § 1.53(d) (where parent becomes expressly abandoned), and such terms should NOT be used when a filing under § 1.53(b) is desired, as the presence of one or both such terms will cause the PTO to treat it as a CPA filing under § 1.53(d), and a petition (under § 1.182) will be needed to convert it to a § 1.53(b) filing.

The petition under 37 CFR 1.182 to convert a properly filed CPA to an application filed under 37 CFR 1.53(b) must be filed expeditiously since the petition will not be granted if the CPA has been processed (and the prior application abandoned) at the time the petition and application file are before the deciding official for a decision on the petition to convert. In such case, applicant's only recourse will be to file a continuing application under § 1.53(b) of the CPA application.

• If a Notice of Abandonment is received on an application that was refiled as a CPA—promptly check on the status of the CPA application with the Office. The Office will not issue a Notice of Abandonment on a prior application where a CPA application has been properly filed even though the effect of the CPA is to expressly abandon the prior application. CPA filing will be acknowledged in the first Office action in the CPA.
• Cases formerly filed under former Rule 60 (with a copy of the prior case) should now be filed under § 1.53(b) and NOT as a CPA.

(c) Inventorship: Always identify the inventors when filing an application, or as many as are known, even though only an alphanumeric identifier is required. § 1.41(a)(3).

If no inventors are set forth on filing the application, and the application is refiled prior to submission of an executed oath or declaration under § 1.63, there will be no inventorship overlap to support a priority claim under 35 U.S.C. 120 and § 1.78, and a petition under § 1.41(a)(2) will be required.

(d) Small Entity Status: To obtain small entity status in a continuing (or reissue application)—continue the practice of specifically referring back to the small entity statement in the prior application and stating that small entity status is desired and appropriate in the continuing application. Reliance on payment of a small entity fee, as is permitted to establish status (§ 1.28(a)(2)), should be viewed as a fail safe mechanism rather than as the primary means to establish status. For example, reliance on a general authorization to pay any fees that are due would not, by itself, be sufficient to establish small entity status as only an authorization to pay small entity fees would be sufficient to establish small entity status.

(e) Filing Continuation or Divisional application under § 1.53(b) using a copy of a declaration from a prior application as permitted by § 1.63(d)(1)(iv):

(1) Reformat the application and supply a new set of claims rather than submit a copy of prior application and a preliminary amendment. Consider providing a statement of no new matter and a marked-up copy (by hand or word processing compare function) showing changes, particularly for the claims. The marked-up copy of the claims, supplied as an extra paper, will aid the examiner in appreciating the current issues to be examined.

(2) Include a statement of incorporation by reference of the prior application in the application transmittal letter. If a page of the prior application is inadvertently omitted on submission to the Office of the continuing application, the omitted page can be reinserted while retaining the original filing date.

2. Appeals:

(a) While appellant now has the right to file a Reply Brief (no longer limited to new points of argument raised in an Examiner's Answer) DO NOTalso include amendments, or new evidence, in Reply Briefs. Reply Briefs that contain amendments or new evidence may not be considered to be Reply Briefs and may, therefore, be denied entry. As no extensions of time are permitted to the 2 months' period for the filing of a reply brief (§ 1.136(a)(1)(ii)), the non-entered paper probably cannot be stripped of the amendment or new evidence and be timely refiled. Thus, you should submit any amendment/evidence separately from the Reply Brief. This way the Reply Brief will be entered and considered independent of the entry of the amendment or new evidence.

(b) Do not save the "best" arguments until filing of the Reply Brief even though all Reply Briefs must be entered and, therefore, you can get your "best" argument in as the last word. If the arguments are, in fact, the "best," the examiner may exercise the option of reopening prosecution to respond (§ 1.193(b)(1)). Even if the examiner does not reopen, the Board may remand the application to the examiner for a response to the new "best" arguments.

(c) Even though new grounds of rejection are not permitted in an Examiner's Answer (§ 1.193(a)(2)), an amendment after final rejection (§ 1.116) that is entered will allow an examiner to apply any rejection in the final action against any of the claims so amended on appeal so long as applicant is notified of the rejection in the advisory action.

(a) Continue to specifically request an extension of time under § 1.136(a) rather than rely upon a general authorization to charge fees as provided for in § 1.136(a)(3). There is always a chance that the Office may initially fail to recognize the presence of the general authorization to charge fees depending upon which paper it appears in and where in the paper it has been placed.

(b) Reliance on a constructive petition for extension of time in § 1.136(a)(3) will not work to provide copendency for the refiling of a continuing application, except where the refiling is by a CPA. A refiling under § 1.53(b) is not a reply or other paper directed to the prior application as is required by § 1.136(a)(3).

(c) Deposit accounts may need closer attention. If general authorizations are more broadly relied upon, such as for extension of time fees, unaccounted for obligations may exhaust the account.

4. Revival: File petitions to revive under § 1.137 (a) or (b) immediately. While the Office has: removed the one year limitation for filing unintentional petitions to revive under § 1.137(b), eliminated the statement relating to promptly filing the petition, and has stated that the Office shall not generally question delays where the petition is filed within three months from first notification or within one year of the date of abandonment, you can expect that "unintentional" petitions to revive filed more than 3 months after abandonment will result in a request for an explanation for the delay. Further, impermissible delay may be found in another forum where there is any delay in filing the petition even if the petition was filed under circumstances where the Office would not generally raise an issue of delay.

Further, for cases not subject to 20 year patent term, the later a petition to revive is filed under 37 CFR § 1.137(a) or (b), the longer is the period to be disclaimed, as a Terminal Disclaimer (TD) is now required for a petition filed under 37 CFR § 1.137(a) or (b), and the six (6) month window under (b) has been removed.

Robert J. Spar, Director, Special Program Law office, USPTO, March 20, 1998