San Diego Intellectual Property Law Association

1
San Diego Intellectual Property Law
Association October 18, 2005
Robert Spar Director of the Office of Patent
Legal Administration (OPLA) (571)
272-7700 Bob.Spar_at_uspto.gov
2
Office of Patent Legal Administration

• Legal and policy guidance
• http//www.uspto.gov/web/offices/pac/dapp/ogsheet.
  html

3
Office of Patent Legal Administration

• Public Assistance
• Patentpractice_at_uspto.gov
• 571-272-7701 general patent policy questions
• 571-272-7702 PTA Help Line
• 571-272-7703 PGPub Help Line
• 571-272-7704 Hurricane Line

4
Topics

• Significant Office Statistics
• Initiatives for Reducing Patent Backlog and
  Enhancing Quality
• Expanding the Workforce Telecommuting
• School of Examiner Education Development (SEED)
  
• Shared Responsibility Quality of Applications
  Submitted
• Rework and Continuing Applications
• Applications that Have Extraordinary Number of
  Claims
• Outsourcing PCT Search Pilot Program
• Pre-Appeal Brief Conference Pilot Program
• Improved Reexamination Process
• Final Rule 35 USC 103(c) as Amended by the
  CREATE Act
• Final Rule Claiming the Benefit of a Non-English
  Provisional Application, and Other Miscellaneous
  Matters

5
Significant Office Statistics

• Filings by Technology Center and Year
• Examiner Production
• Pendency
• Inventory by Technology Center and Art
• Quality
• Rework
• Staffing Hiring and Attrition

6
Application Filings
. . . and Examiner Production
7
UPR Applications Filed

• FY 05 plan 375,080
• 350,625 as of 9/2/2005
• 7.5 above FY 04
• Current projection2 over plan

8
Production
1 UPR Utility, Plant, and Reissue
Applications. 2 FAOM First Action on the
Merits first action count by an examiner after
the filing of an application (does not include
restrictions or other miscellaneous actions). 3
Disposal An examiner allowance, abandonment,
or disposals following a board decision. 4
Production Unit First action count plus
disposal count divided by 2. 5 PCT Patent
Cooperation Treaty. PCT applications are
processed differently and tracked separately from
US National stage applications. For FY 05,
11,372 PUs is 26,417 processed applications.
9
PENDENCY
. . . vs the Backlog
10
FY 05 Patent Pendency (as
of 9/1/2005)
1 Average 1st action pendency is the average
age from filing to first action for a newly filed
application, completed during June-August FY
2005. 2 Average total pendency is the average
age from filing to issue or abandonment of a
newly filed application, completed during
June-August FY 2005. Assuming current input and
output estimates, the agency should achieve first
action pendency of 21.3 months by the end of FY
2005 and total pendency of 30.2 months.
11
First Action Pendency by Art Areas
1 Average 1st action pendency is the average
age from filing to first action for a newly filed
application, completed during June-August FY
2005.
12
TC Application Inventory
1 New Application inventory is the number of
new applications designated or assigned to a
technology center awaiting a first action. 2
Overall Pending Application inventory is the
total number of applications designated or
assigned to a technology center in an active
status. Includes new applications rejected
awaiting response amended under appeal or
interference suspended reexams and allowed
applications awaiting grant publication. Total
inventory includes applications not assigned to a
particular TC, awaiting processing either pre- or
post-examination.
13
Inventory by Art Examples
The number of months it would take to reach a
first action on the merits (e.g., an action
addressing patentability issues) on a new
application filed as of Jan 2005 at todays
production rate. Todays production rate means
that there are no changes in production due to
hiring, attrition, changes to examination
processing or examination efficiencies, and that
applications are taken up in the order of filing
in the given art unit/area. Of course, USPTO is
taking aggressive steps to ensure changes that
will significantly lower the inventory rates in
high-inventory art areas.
14
Patent Quality
15
Quality of Products FY 05
Compliance and error rates as measured by OPQA.
Compliance rates estimated by correcting for
unresolved errors using reversal rate through 3rd
quarter of FY 05. TC compliance rates not
finalized at this time. Estimates based on
unresolved errors and historical reversal rates.
16
UPR Patents Issued
FY 2005 through 8/31/2005 139,283

• FY 2004 170,637

• FY 2005 Plan 176,837

17
Re-Work
18
Technology Centers Rework Statistics
Rework first actions are those actions that
are in a Continuation, CIP, CPA application or an
RCE, but does not include divisional
applications. As of September 14, 2005
19
Hiring and Retention
20
Hires and Attritions
Includes hires on board and confirmed and
pending offers. Total Corps value represents
expected through last class of FY.
21
Initiatives for Reducing Patent Backlog and
Enhancing Quality
22
How Can the USPTO Reduce the Patent Backlog?

• If the Office is to issue quality patents in a
  timely manner, we must fundamentally reform the
  way the Office does business and we must develop
  processes that will make the patent system more
  effectively serve its purposes.
• One Important Approach is Hire More, Train
  Better, Retain Better, and Telecommute.

23
Expanding the Workforce

• In FY05, the Office hired approximately 940
  patent examiners (a 25 increase in examining
  staff).
• The Office is planning to hire an additional
  1,000 patent examiners each fiscal year, through
  fiscal year 2011.

24
Telecommuting for Patent Employees

• Telecommuting pilot program
• Approximately 200 patent volunteers
• Testing hardware, software, and business process
  configurations
• Goal
• In FY06, 820 patent telecommuting participants
• By FY11 (five-year plan), approximately 3,000
  participants.

25

• Training Better
• School of Examiner Education Development (SEED)

26
SEED

• Effective January 2006
• Completely new approach to training new patent
  examiners
• Collegial and collaborative environment
• Up to eight months of intensive coursework
• On examination and relevant legal issues.

27
SEED - Goals

• Very significant increase in initial training
• Goal is to provide our Technology Centers with
  examiners
• who know how to draft complete and high quality
  Office actions
• when they graduate to examination art units

28
SEED To Better Prepare Examiners

• The combination of
• more comprehensive initial training
• for a longer period of time
• Will provide our newest patent examiners
• confidence
• skills
• support network

29
SEED - Details

• Up to 8 months duration
• 1-2 Trainers per 16 Examiners
• Trainer assistants in addition to trainers for
  search examination labs
• Initial Implementation with TCs 2100/2600
• Work on mock and real applications
• Examiners assigned to Art Units at about 4 month
  point

30
SEED 2006

• First year 4 classes
• Starting
• January 23
• May (late month)
• June (mid-month)
• September
• All TC 2100 2600 new examiners in new SEED
  program in 2006

31

• Shared Responsibility
• Quality of Application Submitted

32
Improve Quality of Applications Submitted

• If applications are
• Complete, clear, well-drafted, with
  well-identified, pertinent references,
• It would take less time to properly examine,
  permitting a focused examination on the most
  important aspect of innovation.
• A better input contributes directly both to speed
  of processing and to quality.

33
Improve Quality of Applications Submitted

• Focused Examination
• Patent examination that concentrates on
  evaluating the most pertinent information
  relevant to patentability increases the
  opportunity for the system to get it right the
  first time.
• By working to improve the ways that this
  information comes before the examiner, the Office
  and applicants will best achieve the goal of high
  quality patent grants.

34
Improve Quality of Applications Submitted

• Ensuring such a focused examination is a joint
  responsibility of the examiner and applicant
• For applicants, this allows the proper assessment
  of any amendments or changes to the patent
  application and claims that may be required to
  result in a properly granted patent.
• For examiners, their examination should be
  focused on the prior art most relevant to
  determining whether the claimed invention is
  patentable.

35

• Rework
• and Continuations

36
Rework and Continuations

• More than 26 (FY04) and 28 (FY05) of FAOM are
  rework first actions.
• This rework presents a significant obstacle to
  the ability of the Office to examine new and
  existing applications.
• The Office is presently evaluating ways to bring
  more discipline to Continuing application
  practice and request for continued examination
  (RCE) practice
• To increase the Offices ability to focus on
  truly new applications and innovations.
• first actions that are in a Continuation, CIP,
  or CPA application (but does not include
  divisional applications) or in an RCE. See slide
  18.

37

• Applications that Have Extraordinary Number of
  Claims

38
Extraordinary Numbers of Claims

• A small number of applications are filed with an
  extraordinary number of claims.
• These applications present examiners with
  enormous challenges in ascertaining the nuances
  and incremental differences among the claims
  presented.
• This has a negative impact on the examiners
  ability to conduct high quality examination.
• The burden also impedes the Offices ability to
  promptly examine applications relating to other
  inventions.
• The Office are exploring ways to balance
  applicants needs for certain numbers of claims
  and examiners feasibility to effectively examine
  such a plethora of claims.

39

• USPTO Contracts International Patent Application
  Searches to Commercial Firms
• Pre-OG notice available on the USPTO web site at
  http//www.uspto.gov/web/offices/pac/dapp/ogsheet.
  html.

40
Patent Cooperation Treaty (PCT) Search Pilot
Program

• To determine whether
• searches by commercial entities can maintain the
• accuracy and
• quality standards
• for searches conducted by the USPTO during the
  patent examination process
• while remaining cost effective.

41
International Application Searches

• USPTO expects over 45,000 requests to search
  and/or examine international applications.
• This is in addition to the 350,000 U.S.
  applications the agency receives each year.

42
Reason for Outsourcing

• Outsourcing allows USPTO to focus on reducing the
  backlog of pending national applications, thus
• Increasing productivity
• Enhancing quality
• Efficient and high quality government operations
  are cornerstones of the Presidents Management
  Agenda.

43
Other Pilots Under Consideration

• The USPTO is also exploring arranging to have
  some of its PCT-related work, on a pilot basis,
  done by other established government intellectual
  property offices that currently perform
  PCT-related searches and examinations.

44
Pre-Appeal Conferences
45
Pre-Appeal Conference

• Background
• 21st Century Strategic Plan Quality
• Approximately 60 of all appealed cases are not
  forwarded to BPAI
• Implemented Pre-Appeal Brief Conference Pilot
  Program
• See New Pre-Appeal Brief Conference Pilot
  Program, 1296 Off. Gaz. Pat. Office 67 (July 12,
  2005)

46
Goals

• Avoid Filing Appeal Brief When You Can
• Or, Alternatively, Reduce Size and Cost of An
  Appeal Brief
• Identify clearly improper rejections because of
  factual errors
• Identify clear absence of prima facie case
• Narrow focus to true issues in controversy

47
Why This Pilot Program?

• TCs already provide appeal conferences after the
  submission of an Appeal Brief
• Over half of the appeal conferences result in
  allowance or reopening of prosecution
• Thus, this pre-brief review procedure may
  eliminate, or reduce, the time and expense to
  prepare an Appeal Brief and expedite the
  prosecution process.

48
Who Can Use This Procedure?

• Anyone who is filing a
• Notice of Appeal
• (except under patent reexamination)

WHEN Can It Be Requested? ONLY WITH the Notice of
Appeal
49
What Do You Provide?

• Written Request
• Preferably, use the USPTO Form PTO/SB/33
• Otherwise, label a request as Pre-Appeal Brief
  Request For Review
• Must be filed with the Notice of Appeal
• Arguments
• Not more than five (5) pages, excluding the cover
  request form
• Succinct, Concise Focused
• Identification of CLEAR ERRORS

50
What is the Fee?

• At present, there is no fee for the request.
• The fee for the Notice of Appeal remains.
• The fee for the Notice of Appeal is
  non-refundable, even in the event of a favorable
  outcome from the Pre-Appeal Brief conference.

51
What Does the USPTO Do?

• Technology Center (TC) convenes a panel
• TC managers and conferees experienced in the
  pertinent field of technology
• Includes a SPE and examiner of record
• Panel reviews rejections identified by request,
  arguments submitted with the request, and
  application file
• A determination will be made as to whether an
  issue for appeal is present

52
When Will The Decision Be Mailed?

• Generally, decisions will be made and mailed
  within 45 days of receiving the request.

53
How Long Do You Have To File Appeal Brief
Following Decision?

• You Have the Longer of
• Time Remaining From Notice of Appeal
• OR
• One Month From Mailing of Decision

Usual time extensions may be obtained by fee
54
RECAP

• Remember
• Use the USPTO Form, or Label your Request Form as
• Pre-Appeal Brief Request For Review
• Submit WITH Notice of Appeal, as a SEPARATE
  Document
• No Amendments, Affidavits, or Other Evidence
• No Request Fee, But Notice of Appeal Fee Still
  Required
• No More Than Five (5) Pages of Arguments Attached
  to the Request Form
• CLEAR, CONCISE, FOCUSED

55
Improved Reexamination Process
56
Improved Reexamination Process

• Background
• 21st Century Strategic Plan- Timely Process
• Large number of pending reexamination proceedings
  over four years
• Action Plan
• Process ex parte reexam proceedings pending over
  2 years by end of FY 05
• This will eliminate 420 of 1200 currently pending
  proceedings
• Similar effort is being conducted for pending
  inter partes reexamination proceedings.
• The Office will implement an expanded review of
  all decisions in any reexamination proceeding.

57
Improved Reexamination Process

• A new separate Centralized Reexamination Unit
  (CRU) established
• 20 senior examiners to examine all new
  reexamination proceedings
• Panels to review all actions
• Firm processing time will be established for all
  reexamination proceedings so the Office will
  consistently handle the processing with high
  quality and with special dispatch set in the
  statute.

58
35 U.S.C. 103(c)as Amended by the Cooperative
Research and Technology Enhancement (CREATE) Act
(Public Law 108-453)Enacted December 10, 2004
andas Implemented by a Final Rule Entitled
Changes to Implement the Cooperative Research
and Technology Enhancement Act of 2004, 70 FR
54259 (September 14, 2005)
59
35 U.S.C. 103(c) as Amended by the CREATE
Act(P.L. 108-453)

• CREATE Act revised 35 U.S.C. 103(c) as follows
• Former 35 U.S.C. 103(c) was redesignated as 35
  U.S.C. 103(c)(1) (no substantial change to the
  text)
• New subsections 35 U.S.C. 103(c)(2) and (3) were
  established
• Effective Date December 10, 2004
• Applies to any patent granted on or after
  December 10, 2004
• See slide 46 for more information regarding the
  effective date

60
35 U.S.C. 103(c) as Amended by the CREATE
Act(P.L. 108-453)

• CREATE Act allows certain multiple owners of
  patent applications or patents to be treated as a
  common owner for the purposes of 35 U.S.C.
  103(c)s exclusion of prior art only under 35
  U.S.C. 102(e), (f) or (g) in a rejection under 35
  USC 103(a).
• Avoids the need to form joint ventures to perform
  related research in order to obtain benefit under
  the prior version of 35 U.S.C. 103(c).
• The USPTO has published a final rule entitled
  Changes to Implement the Cooperative Research
  and Technology Enhancement Act of 2004, 70 FR
  54259 (September 14, 2005)
• Effective upon publication and applies to any
  patent granted on or after December 10, 2004

61
35 U.S.C. 103(c) as Amended by the CREATE
Act(P.L. 108-453)

• In order to be treated as common owners under the
  CREATE Act, the following are required
• The claimed invention was made by or on behalf of
  parties to a joint research agreement that was in
  effect on or before the date the claimed
  invention was made
• The claimed invention was made as a result of
  activities undertaken within the scope of the
  agreement and
• The application for patent for the claimed
  invention discloses, or is amended to disclose,
  the names of the parties to the agreement.

62
35 U.S.C. 103(c)(1) as Amended by the CREATE
Act(P.L. 108-453)

• 35 U.S.C. 103(c)(1)
• Subject matter developed by another person,
  which qualifies as prior art only under one or
  more of subsections (e), (f), and (g) of section
  102 of this title, shall not preclude
  patentability under this section where the
  subject matter and the claimed invention were, at
  the time the claimed invention was made, owned by
  the same person or subject to an obligation of
  assignment to the same person.
• (formerly 35 U.S.C. 103(c) with minor changes)

63
35 U.S.C. 103(c)(2) (NEW)as Amended by the
CREATE Act(P.L. 108-453)

• 35 U.S.C. 103(c)(2)
• For purposes of this subsection, subject matter
  developed by another person and a claimed
  invention shall be deemed to have been owned by
  the same person or subject to an obligation of
  assignment to the same person if
• (A) the claimed invention was made by or on
  behalf of parties to a joint research agreement
  that was in effect on or before the date the
  claimed invention was made
• (B) the claimed invention was made as a result
  of activities undertaken within the scope of the
  joint research agreement and
• (C) the application for patent for the claimed
  invention discloses or is amended to disclose the
  names of the parties to the joint research
  agreement. (emphasis added)

64
35 U.S.C. 103(c)(3) (NEW)
as Amended by the CREATE Act(P.L. 108-453)

• 35 U.S.C. 103(c)(3)
• For purposes of paragraph (2), the term joint
  research agreement means a written contract,
  grant, or cooperative agreement entered into by
  two or more persons or entities for the
  performance of experimental, developmental, or
  research work in the field of the claimed
  invention. (Emphasis added.)

65
35 U.S.C. 103(c)as Amended by the CREATE
Act(P.L. 108-453)

• Effective Date Information (see also slide 24)
• The revised 35 U.S.C. 103(c) applies to any
  reissue patent granted on or after its date of
  enactment.
• The recapture doctrine may prevent the
  presentation of claims in reissue applications
  that were amended or cancelled (e.g., to avoid a
  rejection under 35 U.S.C. 103(a) based upon
  subject matter that may now be disqualified under
  the CREATE Act) from the application which
  resulted in the patent being reissued.
• The 1999 change of subsection (f) or (g) to
  one or more of subsections (e), (f), or (g) in
  35 U.S.C. 103(c) is now also applicable to
  applications filed prior to November 29, 1999
  that were pending on December 10, 2004.
• The CREATE Act also includes the amendment to 35
  U.S.C. 103(c) made by 4807 of the American
  Inventors Protection Act of 1999 (see Pub. L.
  106-113, 113 Stat. 1501, 1501A-591 (1999)), which
  only applied to applications filed on or after
  November 29, 1999.

66
35 U.S.C. 103(c) as Amended by the CREATE
Act(P.L. 108-453)

• Applicant may overcome a rejection under 35
  U.S.C. 103(a) based upon subject matter (i.e., a
  patent document, publication, or other evidence)
  which only qualifies as prior art under 35 U.S.C.
  102(e), (f) or (g) by invoking 35 U.S.C. 103(c)
  as amended by the CREATE Act.
• Applicant cannot rely on the provisions of 35
  U.S.C. 103(c) to overcome the following
  rejections
• Obviousness double patenting rejections and
• Rejections under 35 U.S.C. 102.

67
35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by final rule
(70 FR 54259)

• To overcome a rejection by invoking the joint
  research agreement provisions of 35 U.S.C.
  103(c), applicant must
• Provide a statement signed by a 37 CFR 1.33(b)
  party and
• Amend the specification to disclose the names of
  the parties to the joint research agreement (see
  37 CFR 1.71(g) and 1.77(b)(4))
• The final rule deleted the requirement to amend
  the specification to state either
• The date that the joint research agreement was
  executed and a concise statement of the field of
  the claimed invention or
• Where (i.e., by reel and frame number) this
  information is recorded in the Offices
  assignment records
• Unless the specification discloses the required
  information.

68
35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by final rule
(70 FR 54259)

• The statement must provide that
• The claimed invention and the disqualified
  subject matter were made by or on the behalf of
  parties to a joint research agreement as defined
  by 35 U.S.C. 103(c)
• The joint research agreement was in effect on or
  before the date the claimed invention was made
  and
• The claimed invention was made as a result of
  activities undertaken within the scope of the
  joint research agreement.
• (37 CFR 1.104(c)(4)(i))
• The statement should be provided on a separate
  sheet which must not be directed to any other
  matters (37 CFR 1.4(c)).

69
35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by final rule
(70 FR 54259)

• If the applicant disqualifies the subject matter
  used in a rejection under 35 U.S.C. 103(a) in
  accordance with 35 U.S.C. 103(c) as amended by
  the CREATE Act and the final rule,
• During examination, the application and the prior
  art will be treated as if they are commonly owned
  for purposes of 35 U.S.C. 103(c)(1).
• See 37 CFR 1.104(c)(4)

70
35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by final rule
(70 FR 54259)

• A subsequent new double patenting rejection based
  upon the disqualified prior art may apply. See
  the double patenting guidelines in the final
  rule.
• Applicant may file a terminal disclaimer under 37
  CFR 1.321(d) to overcome the double patenting
  rejection.
• Note the disclaimer requires common enforcement
  of the involved patents in addition to a common
  term requirement.

71
35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by final rule
(70 FR 54259)

• Requirements for a terminal disclaimer under 37
  CFR 1.321(d)
• The owners of the rejected application must
• Waive the right to separately enforce the
  patents. See 37 CFR 1.321(d)(3).
• Agree that the patents shall be enforceable only
  during the period that the patents are not
  separately enforced. See 37 CFR 1.321(d)(3).
• Agree that such waiver is binding upon the owner,
  its successors, or assigns. See 37 CFR 1.321(b)
• The final rule eliminates any requirement in
  regard to the common licensing of the invention
  and the disqualified subject matter.

72
35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by final rule
(70 FR 54259)

• Requirements for a terminal disclaimer under 37
  CFR 1.321(d) (contd)
• Comply with 37 CFR 1.321(b)(2)-(b)(4). 37 CFR
  1.321(d)(1)
• Signed by applicant in accordance with 37 CFR
  1.321(b)(1) or patentee in accordance with 37 CFR
  1.321(a)(1), as applicable. 37 CFR 1.321(d)(2)
• The final rule eliminates the requirement for the
  owner of disqualified subject matter to sign the
  terminal disclaimer.

73
35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by final rule
(70 FR 54259)

• Brief Summary of Changes made by the final rule
• Section 1.71 Section 1.71 is amended to further
  revise  1.71(g). Section 1.71(g) specifically
  provides that the specification may provide the
  names of the parties to the JRA in order to meet
  that statutory requirement when invoking the
  safe harbor provision of 35 U.S.C. 103(c). The
  requirements for the execution date and a brief
  summary of the claimed invention, or the reel and
  frame number of the recorded JRA, were removed.
• Section 1.77 Section 1.77 provides for the
  names of the parties to a joint research
  agreement in the preferred arrangement of the
  specification.
• Section 1.104 Section 1.104(c)(4) is amended
  for consistency with the amendment to 35 U.S.C.
  103(c) and to include the requirements for a
  statement to invoke the safe harbor provision
  of 35 U.S.C. 103(c).
• Section 1.109 Section 1.109 is deleted in the
  final rule. Guidelines are set forth in the
  final rule for double patenting situations which
  may arise as a result of the CREATE Act. The
  Manual of Patent Examining Procedure (MPEP),
  804, sets forth the conditions under which the
  Office will otherwise make a double patenting
  rejection.

74
35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by final rule
(70 FR 54259)

• Brief Summary of Changes made by the final rule
  (contd)
• Section 1.130 Section 1.130(b) is reserved.
• Section 1.321 Section 1.321(d) is further
  amended to provide the terminal disclaimer
  requirements for the double patenting situations
  which arise as a result of the CREATE Act.
• The final rule eliminated the following
  requirements (1) that the owner of the
  disqualified patent or application must sign the
  terminal disclaimer and (2) that there is a
  restriction on separately licensing the
  application or patent and the disqualified patent
  or application.
• Section 3.11 Section 3.11(c) is further amended
  to provide that the Office will record a joint
  research agreement or an excerpt of a joint
  research agreement as provided in 37 CFR part 3
  and to be consistent with 37 CFR 1.71(g) as
  amended in the final rule.
• Section 3.31 Section 3.31(g) sets forth the
  requirements for the cover sheet required by
   3.28 seeking to record a joint research
  agreement or an excerpt of a joint research
  agreement as provided by  3.11(c).

75
Additional Information

• For more information, please contact the Office
  of Patent Legal Administration at [phone]
  or e-mail to
• PatentPractice_at_USPTO.gov, or
• Robert A. Clarke [phone]
• Jeanne M. Clark [phone]

76
Provisions for Claiming the Benefit of a
Provisional Application with a Non-English
Specification and Other Miscellaneous
Matters 70 FR 185 (September 26, 2005)(final
rule) Effective date November 25, 2005
77
Final Rule for Claiming the Benefit of a
Non-English Provisional Application and Other
Misc. Matters

• 37 CFR 1.78(a)(5)(iv) is amended to require
  applicant to file
• An English translation of a non-English language
  provisional application and
• A statement that the translation is accurate,
• in the provisional application.
• In response to any notice mailed in a
  nonprovisional application that claims the
  benefit of the provisional application requiring
  the translation and statement, applicant must
  file
• The translation and statement in the provisional
  application and,
• A confirmation in the nonprovisional application,
• unless applicant amends the first sentence of
  the specification or ADS to remove the benefit
  claim.

78
Final Rule for Claiming the Benefit of a
Non-English Provisional Application and Other
Misc. Matters

• Section 1.11(a) is amended to state that
  applications that have been published are open to
  public inspection.
• Published applications are available on the USPTO
  internet website if maintained in the image file
  wrapper (IFW) system.

79
Final Rule for Claiming the Benefit of a
Non-English Provisional Application and Other
Misc. Matters

• Section 1.133(a)(2) is amended to permit an
  interview before first Office action in any
  application if the examiner determines that such
  an interview would advance prosecution of the
  application.
• Examiner may require that an applicant requesting
  an interview before first Office action provide
• a paper that includes a general statement of the
  state of the art at the time of the invention, an
  identification of no more than three (3)
  references believed to be the closest prior
  art, and an explanation as to how the broadest
  claim distinguishes over such references.

80
Final Rule for Claiming the Benefit of a
Non-English Provisional Application and Other
Misc. Matters

• Section 3.28 is amended to require a separate
  copy of the assignment document for patent and
  trademark cover sheets.
• Section 3.73(b)(1)(i) is amended to require, for
  patent matters, that the document(s) submitted to
  establish ownership under  3.73(b) be recorded
  pursuant to  3.11 in the assignment records.
• Statement under 37 CFR 3.73(b) may refer to
  attached assignment document, but document must
  also have been submitted for recordation.

81
Thank You