Best Practices - Suggestions and Tips

Avoid The Most Common Mistakes Made By Practitioners:

Andrew Faile,
Director TC 2600

Avoid Mistakes Throughout Prosecution

• Tips and Suggestions
  • Preparing the Application
  • Filing the Application
  • Avoiding Publication Pitfalls
  • Examination Processing Tips
  • Post Allowance Tips
  • Best Practice Tips (see Appendix)

  Preparing the Application

  • Avoid submitting an application in the European problem/solution format.
    • Format the application according to US rules and procedures. See MPEP § 608
    • Craft claims according to US practice, see MPEP § 608.01(n)
    • Craft claims according to US practice, see MPEP § 608.01(k)

    Pre-Examination Tips

    Forms

    • Do use USPTO forms without altering the language.
    • Do not use a combined declaration and power of attorney form.
    • USPTO forms can be found at: http://www.uspto.gov/patents/apply/forms

    Application Data Sheets

    • Do use an Application Data Sheet (ADS), although an ADS is not required. Customers using an ADS can expect two advantages when applying for a patent:
      1. Improved accuracy of filing receipts.
      2. Accurately recorded application data.
    • Use of a supplemental ADS is possible even though no original ADS was submitted on filing.
    • The following information can be supplied on an ADS:
      • Application Information
      • Applicant Information
      • Correspondence Information
      • Representative Information
      • Domestic Priority Information
      • Foreign Priority Information
      • Assignment Information

      Preliminary Amendments In New Applications

      • Avoid submitting Preliminary Amendments on filing
      • A substitute specification will be required if a preliminary amendment present on filing makes changes to the specification, except for:
        • Changes to title, abstract, claims or addition of benefit claim information to the specification
        • See the notice "Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application," 1300 Off. Gaz. Pat. Office 69 (November 8, 2005), available at:

        Preliminary Amendments in Continuations and Divisionals

        • Avoid submitting Preliminary Amendments on filing a Continuation or Divisional
        • Avoid Preliminary Amendments that cancel all the claims and add new ones

        Filing the Application

        • Select a method of filing the application
          1. Accelerated Examination
          2. Patent Center
          3. Traditional Mail Route
        • Accelerated Examination Common Failings
          • Failure to provide the text search logic. A mere listing of terms will not suffice.
          • Failure to search the claimed invention. The petition for accelerated examination may be dismissed if the search is not commensurate in scope with the claims.
          • Failure to show support in the specification and/or drawings for each limitation of each claim.
          • Failure to show support in the specification and/or drawings for each limitation of each claim for every document whose benefit is claimed.
          • Failure to specifically identify the limitations in each claim that are disclosed in each reference.

          Patent Center Filing

          • Avoid coding (identifying) a Request for Continued Examination (RCE) as an "Amendment" when filing an RCE
          • Avoid identifying papers after the initial filing as "new"
          • Avoid common PCT filing mistakes
          • Avoid filing color images or images that have a resolution higher than 300x300 dots per inch (dpi)

          Avoid Publication Pitfalls

          • Avoid inconspicuous requests for nonpublication.
          • Publication will generally include all preliminary amendments submitted in time to be included in the publication.
          • If amendments to the specification are desired to be included in publication, submit a substitute specification.
          • Practitioners must include the assignment information in the transmittal letter or ADS.
          • Avoid misspelling the names of inventors or assignees.
          • Review the filing receipt promptly so that corrections can be requested before publication or export of data for publication.
          • Avoid filing requests for Corrected Publication 37 CFR § 1.221(b) that fail to recite material errors.

          Examination Processing Tips

          General Prosecution Advice

          • Amendments to the claims and/or specification should be accompanied by a written statement indicating specific support for the change. If the support is implicit, an explanation is beneficial.
          • In response to restriction requirements, where inventions are indeed patentably indistinct, applicants should present arguments to that end.
          • Read the entire prior art reference cited by the examiner, not just the part relied upon by the examiner in the rejection.

          Pre-Appeal Brief Conference

          • Avoid sending the request separate from the Notice of Appeal.
          • Avoid making a request when there is an outstanding after-final amendment.
          • Avoid attaching more than five pages to the cover form.
          • Avoid sending in a supplemental request.
          • Avoid paying a second Notice of Appeal fee in the application.

          Filing of Continuation-in-Part (CIP) Applications

          • Consider prosecuting an improved CIP invention independently of the prior invention:
            • File, if need be, a continuation only to the original invention, or take an appeal on the original invention, and
              • File a new application, rather than a CIP, for only the new invention:
                • without a benefit claim (35 U.S.C. §120, 37 CFR § 1.78) to the initial application, and
                • therefore without shortening the patent term of the initial invention if it were to be included in the CIP application, as
                • any benefit claim in a CIP cannot protect the new invention.

                Post Allowance Tips

                Issue Fee Payments

                • Avoid filing an Information Disclosure Statement (IDS) after payment of the issue fee.
                  • File an IDS filed after payment of the issue fee with a Petition for Withdrawal from Issue (37 CFR 1.313(c)) and an RCE (37 CFR § 1.114). Otherwise, the IDS will be placed in the file and the cited documents will not be considered by the examiner.
                  • The issue fee payment may be submitted via facsimile to the Office of Patent Publications ((571) 273-2885) or Patent Center to ensure the payment is received within the non-extendable time period set forth in the Notice of Allowance and Fee(s) Due (PTOL-85).

                  Withdrawal from Issue

                  • Petitions to Withdraw from Issue may be hand carried or sent via facsimile to the Office of Petitions.
                    • Hand carries should be brought to the security guard station of the Madison West building, 600 Dulany Street, Alexandria VA 22314.
                    • The facsimile number for the Office of Petitions is (571) 273-0025.

                    Thank You.

                    APPENDIX BEST PRACTICES

                    Best Practices

                    Use of S-signatures (37 CFR § 1.4(c)(2))

                    • A practitioner creates a document and S-signature signs it on his/her PC. The practitioner can then:
                      • Facsimile transmit the document directly from the PC to the Office; or
                      • Print the document and then facsimile transmit, mail, or hand-carry the document to the Office.
                      • Electronically sent to the practitioner, e.g., via an e-mail. The practitioner can then facsimile transmit, mail or hand-carry the S-signature signed document to the Office.
                      • Do direct a Power of Attorney to the Attorneys Associated with the Customer Number to the Customer Number
                      • Do provide a separate Power of Attorney and a separate Oath/Declaration
                      • Do provide a valid power of attorney with a submission for permission to access
                      • Only the designated attorney or agent may grant permission to access.

                      Fee Payment Tips

                      • Avoid placing a stop payment on a check for USPTO services or to circumvent the rules of practice. This action is not appropriate.
                        • Request a refund (37 CFR § 1.26) where fees were paid by mistake or in excess of the amount required.
                        • Ensure that the account from which the check is drawn contains sufficient funds prior to submitting the check to the USPTO.

                        Fee Payment Tips

                        • Do use a Deposit Account Number on a transmittal form authorizing payment
                          • Do not use a Customer Number to authorize payment of fees.
                          • Avoid contradictory statements on payment

                          Maintenance Fees/Deposit Accounts

                          • Maintenance fees can be paid online: https://fees.uspto.gov/MaintenanceFees
                          • USPTO deposit accounts can be replenished online using Financial Manager. For more information about USPTO deposit accounts visit: www.uspto.gov/DepositAccounts
                          • Inquiries related to deposit accounts, maintenance fees and refunds may be directed to the Receipts Accounting Division.
                          • Proofread claims for clarity and precision
                          • Present all cogent arguments and evidence before final rejection
                          • If the examiner is believed to be ignoring a claim limitation, a personal or telephonic interview may facilitate the prosecution to completion.
                          • Don't initiate a response on the absolute last day of the statutory period, if possible.
                          • Don't personally attack the Examiner in a response to Office Action.
                          • Follow the chain of command for assistance:
                            • First, call the Examiner.
                            • If he or she is non-responsive or unavailable, contact the Supervisor.
                            • If the issue is still not resolved, contact the Technology Center Director.

                            Further Information

                            Helpful Web Pages:

                            • Notices, Recent Patent-Related - a very current list of all Federal Register, Official Gazette and pre-Official Gazette notices, and certain Office memoranda: http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
                            • Forms Page - current USPTO forms available for use by the Public: http://www.uspto.gov/patents/apply/forms
                            • Manual of Patent Examining Procedure (MPEP): http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
                            • Mailing Addresses and Mail Stops: http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm
                            • Facsimile Numbers: http://www.uspto.gov/web/offices/com/sol/og/2005/week42/patcorr.htm
                            • USPTO Glossary: http://www.uspto.gov/main/glossary/index.html