Recent Patent-Related Rule Making and Changes in USPTO Practice

July 29, 2003 1

Recent Patent-Related Recent Patent-Related Rule Making and Rule Making and Changes in USPTO PracticeChanges in USPTO Practice

Joni Y. ChangLegal AdvisorOffice of Patent Legal Administration (OPLA)(703) 308-3858, [email protected]

July 29, 2003 2

TOPICSTOPICS Rule Making/ Notices:

1. Image File Wrapper (IFW) – Final Rule Information Disclosure Statement (IDS) Revised Amendment Practice

2. Elimination of CPA Practice – Final Rule

3. Notice of Foreign Filing

4. Reexamination Guidelines

5. Clarification of Power of Attorney Practice, and Revisions to Assignment Rules – Notice of Proposed Rule Making

6. Customer Number Bar Code Labels

7. Batch Updates

July 29, 2003 3

Image File Wrapper (IFW) – Final RuleImage File Wrapper (IFW) – Final RuleEffective date: July 30, 2003

Changes to Implement Electronic Maintenance of Official Patent Application Records, 68 Feg. Reg. 38611 (June 30, 2003)(final rule).

July 29, 2003 4

The Office is implementing the Image File Wrapper (IFW) system which is an image technology system for storage and maintenance of records associated with patent applications.

Paper components of the application file contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications will be scanned into the IFW system as electronic image files.

All processing and examination will be performed with the electronic image files, instead of paper source documents, by all Office personnel.

IFW ImplementationIFW Implementation

July 29, 2003 5

The electronic image files in the IFW system will be the official records of the applications (the transition started on 6/30/03).

See Notification of United States Patent and Trademark Office Patent Application Records being Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17, 2003).

IFW Implementation (Continued)

July 29, 2003 6

Applicants may continue to file applications and correspondence in paper form.

Alternatively, applicants may use the Office electronic filing system (EFS) for new application filings and certain information disclosure statement (IDS) submissions.

Copies of U.S. patents and U.S. patent application publications are not required under §1.98 if the references are being submitted in an e-IDS.


July 29, 2003 7

The Office will supply copies of U.S. patents and U.S. patent application publications cited by the examiner to applicants for applications in IFW until the Office implements a system to permit applicants via Patent Application Information Retrieval (PAIR) system to access these documents electronically.

Foreign patent documents and non-patent literature will still be provided.

U.S. patents and application publications are currently available on the USPTO website at http://www.uspto.gov/patft/index.html


July 29, 2003 8

Applicants may electronically access their applications in the IFW system via private side of PAIR.

The contents of published applications that are in the IFW system will be viewable by the public through the public side of PAIR in FY04.


July 29, 2003 9

The backfile of existing applications will be scanned, and indexed, into the IFW system.

A schedule for capturing the backfile of existing applications linked to the movement of art units to the Office’s new location at Carlyle has been established.

When a paper for an existing application in a designated art unit is recognized, the paper and the application will be scanned into the IFW system.

By December of 2003, 1,700 examiners (from TCs 1600, 1700 and 2800) are expected to be working in IFW environment with all their applications scanned into the IFW system.


July 29, 2003 10

The Office received 20 written comments from intellectual property organizations, law firms, and patent practitioners in response to the notice of proposed rulemaking.

The comments are posted at http://www.uspto.gov/web/offices/pac/dapp/opla/comments/index.html

IFW Rule Making

July 29, 2003 11

The rules have been revised to eliminate Office’s return of certain papers. As part of the implementation of IFW,

the original paper will be disposed in accordance with a record retention schedule after scanning.

37 CFR 1.3, 1.59, and 1.99

July 29, 2003 12

Section 1.9, “Definitions”, has been amended to clarify that the word “paper” and “papers” refer to a document or documents, which may be electronic records or physical paper sheet(s).

Section 1.14, “Patent applications preserved in confidence”, has been revised to provide clarity and expand the rule to provide for electronic files.

37 CFR 1.9 and 1.14

July 29, 2003 13

Separate paragraphs in §1.14(a) were established to state what access or information is available in specific situations: Patented applications and statutory invention registrations

(SIR). (§1.14(a)(1)(i)) Published abandoned applications. (§1.14(a)(1)(ii)) Published pending applications. (§1.14(a)(1)(iii)) Unpublished abandoned applications (including provisional

applications) that are identified or relied upon. (§1.14(a)(1)(iv))

Unpublished pending applications (including provisional applications) whose benefit is claimed. (§1.14(a)(1)(v))

Unpublished pending applications (including provisional applications) that are incorporated by reference, or otherwise identified. (§1.14(a)(1)(vi))

37 CFR 1.14(a)

July 29, 2003 14

Request for Accessunder 37 CFR 1.14(a)(1)(iv)

Applicants are encouraged to use Form PTO/SB/68 which has been revised to include explanatory notes concerning when access is available.

37 CFR 1.14

July 29, 2003 15

Electronic access to an application Where a copy of the application papers or

access to the application is available pursuant to §§ 1.14(a)(1)(i) through 1.14(a)(1)(vi), the Office may at its discretion provide access only to an electronic copy of the file contents of the application.

37 CFR 1.14(b)

July 29, 2003 16

Papers must not be permanently bound Papers must be readily separable for

scanned entry into the image system. The use of binder clips or standard office

staples will generally be acceptable.

37 CFR 1.52

July 29, 2003 17

Each section of a patent application is required to start on a separate sheet and include no other portions of the application or other material. The application will be electronically

scanned and each section of the application (e.g., text of the specification, abstract, claims) will be indexed separately in IFW.

37 CFR 1.52

July 29, 2003 18

Elimination of the prohibition on using the abstract to interpret the claims

§1.72(b) has been amended to delete the last sentence in the rule (“The abstract will not be used for interpreting the scope of the claims.”) to be consistent with Hill Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.*, 54 USPQ2d 1437, 1440 n.1 (Fed. Cir. 2000).

37 CFR 1.72

July 29, 2003 19

Electronic Information Disclosure Statement (eIDS) Section 1.98 has been amended to provide that the

requirement for a copy of U.S. patents and U.S. application publications does not apply to any IDS submitted electronically in compliance with the Office’s EFS. Also see 1262 OG 94 (9/17/02).

Only U.S. patents and application publications may be submitted with eIDS.

eIDS may be submitted with original application or later. eIDS may be submitted even where application was not

submitted by EFS.

37 CFR 1.98

July 29, 2003 20

Information Disclosure Statement Copies of cited U.S. patents and U.S. application

publications are not required for IDS submissions filed in:

U.S. applications filed after June 30, 2003; and

International applications that have entered the national stage under 35 U.S.C. 371 after June 30, 2003.

See Information Disclosure Statements May Be Filed Without Copies of U.S. Patents and Published Applications in Patent Applications filed after June 30, 2003 (signed July 11, 2003). The Pre-OG Notice is available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

July 29, 2003 21

IDS (Continued)

For applications filed on or before June 30, 2003, copies of cited U.S. patents and patent application publications are still required unless the references are submitted in an eIDS.

Applicants are still required to submit copies of foreign patent documents and non-patent literature in accordance with §1.98(a)(2).

July 29, 2003 22

Revised Amendment Practice37 CFR 1.121Revised Amendment Practice37 CFR 1.121

July 29, 2003 23

Strict compliance is mandatory - all amendments filed on or after July 30, 2003 must comply with the revised 37 CFR 1.121, except amendments to the specification and claims filed in reissue applications and reexamination proceedings.

A sample amendment document is posted on the USPTO’s website at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/moreinfoamdtprac.htm

Revised Amendment Practice

July 29, 2003 24

Major Changes from Notice of Proposed Rule Making : Only seven status identifiers are permissible instead of eleven. The text of withdrawn claims must be included in the listing of

the claims. Comments on the NPR suggested supplying text of

withdrawn claims for rejoinder purposes. Applicants may need to amend withdrawn claims to include

limitations added to elected claims to permit rejoinder. Drawing changes may be shown by annotated drawings. Permissible markings only include underlining, strikethrough,

and double brackets [[ ]]. Note: changes from NPR are highlighted in bold on the next

few slides.

Revised Amendment Practice (Continued)

July 29, 2003 25

Highlights: Each section of an amendment paper must start on a

separate sheet. For example: each of the following sections must start

on a separate sheet: Introductory comments, Amendments to the Specification, Amendments to the Claims, Amendments to Drawings, and Remarks.

Submit only one version of the replacement paragraph or section, or currently amended claims, with markings (i.e., strikethrough, double brackets [[ ]], or underlining), to show the changes relative to immediate prior version.

The requirement to provide a clean version has been eliminated, except when applicant submits a substitute specification.


July 29, 2003 26

When there is any amendment to a claim, a claim listing of all claims ever presented in the case must be supplied in ascending numerical order.

An example of a claim listing is as follows:

Claims 1-5 (canceled)Claim 6 (previously presented) A bucket with a handle.Claim 7 (withdrawn) A handle comprising an elongated wire. Claim 8 (withdrawn) The handle of claim 7[[6]] further comprising a plastic

grip.Claim 9 (currently amended) A bucket with a green blue handle. Claim 10 (original) The bucket of claim 9 wherein the handle is made of

wood. Claim 11 (canceled)Claim 12 (not entered)Claim 13 (new) A bucket with plastic sides and bottom.

Amendments to Claims

July 29, 2003 27

What is a claim listing? A claim listing must include:

The claim number of every claim ever presented in the application, whether entered or not;

A status identifier, in parentheses, following each claim number;

The text of all pending claims (including withdrawn claims); and

Markings to show the changes made only in the current amendment.

The claims in the listing (in the current amendment) will replace all prior versions, and listings, of claims in the application.

Amendments to Claims (Continued)

July 29, 2003 28

The seven (7) permissible status identifiers and their definitions, are:

1. (Original): Claim filed with original specification (not added by preliminary amendment and not previously amended).

2. (Currently amended): Claim being amended in the current amendment. Currently amended claims must include markings (strikethrough, double brackets, or underlining) to indicate changes.

3. (Canceled): Claim canceled or deleted in current amendment or previously. Do not present the text of a canceled claim. Consecutive canceled claims may be grouped together (e.g., claims 1-5 (canceled)).


July 29, 2003 29

Seven (7) permissible status identifiers (cont.):4. (Withdrawn): Non-elected claim.

The text of a withdrawn claim must be presented. Withdrawn claims that are being currently amended must

be presented with markings (strikethrough, double brackets, or underlining) to indicate changes.

Example: Claim 8 (withdrawn) The handle of claim 7[[6]] further comprising a plastic grip.

5. (Previously presented): This is a generic identifier to cover any claim that was previously added or amended in an earlier amendment paper. The proposed identifiers “previously amended” or

“previously added” were not adopted, and must not be used.


July 29, 2003 30

Seven (7) permissible status identifiers (cont.):

6. (New): Claim being added in the current amendment paper. The text of the claim must be presented in clean form without underlining.

7. (Not entered): Claim presented in a previous unentered amendment. Do not present the text of a not entered claim. Consecutive not entered claims may be grouped

together (e.g., Claims 20-25 (not entered)). If in doubt as to whether a prior amendment was

entered, the claim should be presumed to be “not entered”.


July 29, 2003 31

The following status identifiers in NPR have been eliminated:

previously amended, previously added, reinstated-formerly claim #_, previously reinstated, re-presented-formerly dependent claim #_,

and previously re-presented.


July 29, 2003 32

The listing of claims must comply with the following: A status identifier for each claim is required.

Multiple status identifiers must not be used for any single claim.

The text of all claims being currently amended must be presented with markings to show changes relative to immediate prior version.

Only claims of the status “currently amended” and “withdrawn” (if the withdrawn claims are being currently amended) may include markings.

All other pending claims (including withdrawn claims that are not being currently amended) must be presented in clean text (without markings).


July 29, 2003 33

Any claim presented in clean text (no markings) constitutes an assertion that it has not been changed relative to the immediate prior version, except omitting markings (i.e., underlining, strikethrough, and double brackets) and deleted text. For example,

If the immediate prior version of the claim was: “Claim 1 (currently amended) A bucket with a blue handle.”

The listing of claims in the current amendment must have: “Claim 1 (previously presented) A bucket with a handle.”


July 29, 2003 34

Canceled claims and not entered claims may only have a “canceled” or “not entered” status identifier after the claim number. The text must not be supplied.

Grouping of Claims – consecutive canceled claims or not entered claims may be aggregated into one line. Examples: Claims 1-5 (canceled)

Claims 20-25 (not entered)

New or added claims must have “new” as a status identifier Do not underline the text of the new claims.


July 29, 2003 35

Markings to Show Changes: Replacement paragraphs or sections, replacement abstracts,

currently amended claims, and substitute specifications, must include markings to show all changes relative to the immediate prior version.

Added text must be shown by underlining.

Deleted text must be shown by strikethrough (e.g., strikethrough), with 2 exceptions:

For deletion of five or fewer consecutive characters, double brackets [[ ]] may be used (e.g., [[eroor]]); and

If strikethrough cannot be easily perceived, deleted text must be shown by double brackets [[ ]] around the deleted text characters.

For example: changing “4 corners” to “three corners” should be indicated by “three[[4]] corners”.


July 29, 2003 36

Markings to Show Changes (cont’) For changes of punctuation marks or difficult to

perceive characters, applicants may delete text before and after with strikethrough, and then insert such text along with the change by underlining. For example: If the hyphen in “strike-through” is to be deleted, it

may be shown as “strike-throughstrikethrough”


July 29, 2003 37

The location of the paragraph or section to be deleted or replaced, or where a new paragraph or section is to be added, must be unambiguously identified. The location can be identified by using a few words at the

beginning and/or the end of the paragraph or section.

Do not underline the text of a new paragraph or section.

Deletion of a paragraph or section must only include an instruction to delete, and the location of the paragraph or section.

Replacement paragraph or section must be a marked-up version showing the changes.

A clean version of any replacement paragraph or section must not be submitted in addition to a marked up version, except when applicant submits a substitute specification.

Amendments to Specification

July 29, 2003 38

An amendment to an abstract is treated like an amendment to the specification.

If the changes are minor in nature, submit a replacement abstract with markings to show all changes relative to the immediate prior version.

If the abstract is being substantially rewritten, submit a new abstract in clean text (no markings) accompanied by an instruction for the cancellation of the previous abstract.

Any new, or replacement, abstract must be submitted on a separate sheet (37 CFR 1.72).

Amendments to Abstract

July 29, 2003 39

Substitute Specification under 37 CFR 1.125 requires: A statement that the substitute specification

includes no new matter.

A specification with markings to show all the changes relative to the immediate prior version.

A clean version (without markings) of the substitute specification.

The requirements of a marked-up version and a clean version have been retained.

Substitute Specification

July 29, 2003 40

Amendment to drawings must include: Replacement drawing sheet showing amended

figures which include the desired changes, without markings, on a separate sheet in compliance with §1.84; and

Explanation of the changes in the remarks, or preferably, in the drawing amendments section, of the amendment paper.

Optional unless required by examiner: Annotated drawing sheet – a marked-up copy

of the amended figure(s) with annotations showing the change(s) may be submitted, or required by the examiner.

Amendments to Drawings

July 29, 2003 41

Replacement drawing sheet(s) must be identified in top margin as “Replacement Sheet”.

Annotated drawing sheet(s) must be identified in top margin as “Annotated Marked-up Drawings”. This will avoid confusion between a replacement sheet

and an annotated sheet. Annotated drawing sheet(s) will not be entered as part

of the official drawing(s) for the application.

The replacement drawing sheet(s) and annotated drawing sheet(s), if any, should follow the last page of the amendment paper, as attachment(s).

Amendments to Drawings (Continued)

July 29, 2003 42

Proposed drawing correction process is eliminated.

Replacement drawing sheet with changes is accepted by examiner, unless otherwise notified by examiner. No further drawing submission is required.

If not acceptable, applicants will be notified of any objections or additional requirements.


July 29, 2003 43

Any replacement drawing sheet including amended figures must include all of the figures appearing on the immediate prior version of the sheet.

The replacement drawing figure must not be labeled as “amended.”

37 CFR 1.173 now provides for amending drawings in reissue applications in a similar manner.


July 29, 2003 44

Deletion of a figure requires the following:

An instruction to delete the figure;

A replacement sheet which does not include the canceled figure, unless no other figure is on the same sheet as the canceled figure;

Amendment to the specification to make corresponding changes to the description of the drawings (e.g., deletion of the description of the canceled figure); and

If other figures need to be renumbered, those figures also need to be amended with revised figure numbers via replacement drawing sheets.


July 29, 2003 45

Any amendment after final (§1.116), or amendment filed with a request for continued examination (RCE) under §1.114, must include markings showing the changes relative to the last entered amendment.

Do not include markings to show changes relative to any unentered amendment.

Applicant should not assume that an after final amendment is entered because after final amendments are not entered as a matter of right (§1.116).

After Final Amendments

July 29, 2003 46

If applicant has not received an advisory action, applicant should check via PAIR, or call the examiner, to determine whether the after final amendment has been entered before filing another after final amendment or an amendment with an RCE.

If the advisory action has indicated that an after final amendment will be entered upon the filing of an appeal, applicant should assume that the after final amendment is not entered.

Any subsequent amendment must include markings showing the changes relative to the last entered amendment, and not the amendment which the advisory action indicated will be entered upon the filing of an appeal.

After Final Amendments (Continued)

July 29, 2003 47

If applicant wishes to file an RCE after filing more than one after final amendment that has not been entered, applicant is encouraged to file an amendment with the RCE that includes: Instructions not to enter the unentered after final

amendments; and All of the desired changes, including changes presented in

the unentered after final amendments. The markings must show changes relative to the last

entered amendment. A claim listing which includes any unentered claims

presented using the status identifier “not entered” (e.g., claims 20-25 (not entered)).

Any new claims must be numbered consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not).

After Final Amendments (Continued)

July 29, 2003 48

Applicants will be notified of any amendment paper that is not accepted because the changes do not comply with revised §1.121. For preliminary amendments and replies to non-final Office

actions or notices, A Notice of Non-Compliant Amendment identifying the problem

section(s) will be mailed; and A period for reply shall be given; but Patent term adjustment (PTA) reductions may be incurred. See

§1.704(c)(7). For after-final amendments,

Non-compliance will be indicated in an advisory action; and The time period for reply continues to run from the mailing date

of the final Office action. See MPEP 714.03 (8th Ed. 1st Rev., Feb. 2003).

Treatment of Non-Compliant Amendments

July 29, 2003 49

The Notice of Non-Compliant Amendment will identify: Each section of the amendment that is not in compliance with 37

CFR 1.121; Items that are required for compliance; and The reasons why the section of the amendment fails to comply with

37 CFR 1.121. In reply to the Notice, applicants must submit the corrected section of

the amendment that was non-compliant. Re-submission of the entire amendment is not required. The entire section, however, with corrections, must be resubmitted.

The Office will only enter the sections of the amendment that are in compliance with 37 CFR 1.121.

Treatment of Non-Compliant Amendments (Continued)

July 29, 2003 50

Non-compliant claim amendment example: If an amendment includes:

(1) amendments to the specification, and

(2) amendments to the claims, including adding new claims 21 – 25,

But the amendments to the claims were non-compliant,

Because the claim listing did not include a status identifier for each claim,

A Notice of Non-Compliant Amendment will be mailed.

Example

July 29, 2003 51

Non-compliant claim amendment example continued: In reply to the Notice, applicant must submit a corrected

claim listing that includes a status identifier for each claim.

The new claims 21-25 must be presented with the status identifier of “new” and the text of the claims not underlined.

Note: the new claims 21-25 must not be presented with the status identifier of “not entered” and must not be renumbered as claims 26-30.

A non-compliant amendment is different than an unentered after final amendment situation.

In the after final situation, the claim numbers of any unentered new claims may not be re-used.

Example (Continued)

July 29, 2003 52

Non-compliant claim amendment example continued:

The Office would enter: 1. The amendments to the specification from the

original amendment paper, and

2. The amendments to the claims that include the corrected claim listing from the paper filed in reply to the Notice.

Example (Continued)

July 29, 2003 53

The revised amendment practice under 37 CFR 1.121 does not apply to amendments filed in the international stage of an international application. Such amendments must be in compliance with the Patent

Cooperation Treaty (PCT) amendment procedure (i.e., PCT Articles 19 and 34(2)(b)).

Thus, status identifiers are not to be used during the international stage.

Amendments filed in the national stage (pursuant to 35 U.S.C. 371) of an international application must comply with the revised amendment practice under 37 CFR 1.121. The status identifier “original” must only be used for claims that

were presented on or before the international filing date and have not been modified or canceled.

International Applications

July 29, 2003 54

Elimination of CPA Practice as to Utility and Plant Applications – Final Rule

Elimination of CPA Practice as to Utility and Plant Applications – Final Rule

Effective date: July 14, 2003

Elimination of Elimination of Continued Prosecution Application Practice as to Utility and Plant Patent Applications, 68 Fed. Reg. 32376 (May 30, 2003), 1271 Off. Gaz. Pat. Office 143 (June 24, 2003)(final rule).

July 29, 2003 55

Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications.

Any CPA filed in a utility or plant application that was filed on/after June 8, 1995 will be treated as a request for continued examination (RCE) under §1.114.

Note: If the request for a CPA does not satisfy all of the RCE requirements under §1.114, the request will be treated as an improper RCE.

Any CPA filed in a utility or plant application that was filed before June 8, 1995 will be treated under 37 CFR 1.53(e) as an improper application.

CPA practice remains in effect for design applications.

Elimination of CPA Practice

July 29, 2003 56

Notice of Foreign FilingNotice of Foreign Filing

When a notice of foreign filing is required after a request for nonpublication request was made.

Clarification of the United States Patent and Trademark Office’s Interpretation of the Provisions of 35 U.S.C. 122(b)(2)(B)(ii)-(iv), 1272 Off. Gaz. Pat. Office 22 (July 1, 2003).

July 29, 2003 57

The notice clarifies that:

(1) If an applicant makes a nonpublication request and then rescinds the nonpublication request before/on the date a counterpart application is filed in an eighteen-month publication country, the application will be treated as if the nonpublication request was never made.

(2) If an applicant makes a nonpublication request,

subsequently files a counterpart application in an eighteen-month publication country and also files a notice of this foreign filing within forty-five days of the date such counterpart application was filed, the applicant is not required to rescind the nonpublication request.

Notice of Foreign Filing

July 29, 2003 58

The notice clarifies that (continued):

(3) If an applicant makes a nonpublication request and subsequently files a counterpart application in an eighteen-month publication country before the nonpublication request is rescinded, the applicant is required to notify the USPTO of the foreign filing not later than forty-five days after the date such counterpart application was filed to avoid abandonment of the application (even if no one recognizes that the application is abandoned).

(4) When an application is abandoned due to the failure to timely notify the USPTO of the filing of a counterpart application in an eighteen-month publication country, applicant’s sole remedy to restore the application to pending status is by filing a petition under 37 CFR 1.137(b) to revive the abandoned application.

Notice of Foreign Filing (Continued)

July 29, 2003 59

The notice clarifies that (continued):

(5) Applicants should also provide a notice of foreign filing when rescinding a nonpublication request in anticipation of filing a counterpart application in an eighteen-month publication country because no benefit is given to a certificate of mailing or transmission under 37 CFR 1.8 on a rescission of a nonpublication request in determining whether applicant has rescinded the nonpublication request before or on the date a counterpart application is filed in an eighteen-month publication country.

(6) Applicants may use USPTO form PTO/SB/36 (revision April 2001 or later) to both rescind a nonpublication request and provide notice of foreign filing.

Notice of Foreign Filing (Continued)

July 29, 2003 60

Reexamination GuidelinesReexamination Guidelines

Effective Date: November 2, 2003

Revised Guidelines for Usage of Previously Cited/Considered Prior Art In Reexamination Proceedings, 1272 Off. Gaz. Pat. Office 24 (July 1, 2003).

July 29, 2003 61

This notice sets forth reexamination policy and practice now in effect as a result of the revision of the reexamination statute made by the Public Law 107-273 (2002), which, in effect, overruled In re Portola, 100 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). See In re Robert T. Bass, 65 USPQ2d 1156, 1157 (Fed. Cir. 1997).

Permitting reexamination on the basis of prior art that was previously cited by or to, or considered by, the USPTO.

In any reexamination ordered on or after November 2, 2002 (the effective date of the statutory revision), reliance on old art does not necessarily preclude the existence of a substantial new question of patentability that is based exclusively on that old art.

Reexamination Guidelines

July 29, 2003 62

Power of Attorney Practice and Assignment Rules -

Notice of Proposed Rule Making

Power of Attorney Practice and Assignment Rules -

Notice of Proposed Rule Making

Clarification of Power of Attorney Practice, and Revisions to Assignment Rules, 66 Fed. Reg. 38258 (June 27, 2003)(proposed rule)

Available on the USPTO web site at: http://www.uspto.gov/web/offices/com/sol/notices/68fr38258.pdf

Comments may be sent to [email protected] and must be received by August 26, 2003. No public hearings are scheduled.

July 29, 2003 63

Power of Attorney Practice and Assignment RulesSignificant Changes Being Proposed

The terms “power of attorney” and “Customer Number” are defined. Power of attorney to specific attorneys limited to ten, or fewer.

If power of attorney is to be given to more than ten registered practitioners, applicants must use the Office’s Customer Number practice. (37 CFR § 1.32)

The “associate” power of attorney practice will be discontinued. (37 CFR § 1.34)

Only copies of assignment documents may be submitted. Original assignment documents will no longer be returned to applicants/patentees. (37 CFR § 3.24)

July 29, 2003 64

Customer Number PracticeMPEP 403 (8th Ed. 2001) (Rev. 1, Feb 2003)

Customer Numbers (previously "Payor Numbers") may be used to:

Submit a list of practitioners by Customer Number such that an applicant or an assignee may in a Power of Attorney appoint those practitioners associated with the Customer Number;

Designate the correspondence address of a patent application by a Customer Number such that the correspondence address for the patent application would be the address associated with the Customer Number; and

Designate the fee address ( 37 CFR 1.363) of a patent by a Customer Number such that the fee address for the patent (for maintenance fee notices) would be the address associated with the Customer Number.

July 29, 2003 65

Customer Number Practice (Continued) MPEP 403 (8th Ed. 2001) (Rev. 1, Feb 2003)

Applicants may not appoint more than one Customer Number for a particular purpose (e.g., correspondence address).

Applicants cannot give a power of attorney to both practitioners associated with a Customer Number and to a list of practitioners.

See MPEP § 403 for more information.

July 29, 2003 66

Customer Number Bar Code LabelsCustomer Number Bar Code Labels

Customer Number Bar Code Labels and Papers with Shaded Portions will No Longer be Permitted in Correspondence for Patent Applications (signed July 15, 2003)

The Pre-OG Notice is available at http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

July 29, 2003 67

Customer Number Bar Code Labels and Papers with Shaded Portions will No Longer be Permitted

Customer Number Bar code Labels will no longer be permitted to be used in any correspondence to the Office.

Bar code readers cannot read the bar code on the label when it is displayed on a computer monitor for processing IFW applications.

Gray (non-white) backgrounds on forms or correspondence are no longer permitted.

The text on a gray (non-white) backgound may be illegible after scanning.

Clear labels are permitted if the Customer Number is in Arabic numerals (e.g., 10203) and is legible.

Questions should be directed to Karin Ferriter at (703) 308-6906 or to [email protected].

July 29, 2003 68

Batch UpdatesBatch Updates

Notice of Elimination of Batch Update Practice to Change Power of Attorney, 1272 Off. Gaz. Pat. Office 24 (July 1, 2003).

July 29, 2003 69

Batch Updates Effective June 5, 2003, the ability to use a "batch update" to

change powers of attorney has been discontinued.

Individual power of attorney changes must be filed in each application!

The ability to use the batch update process for making changes in the correspondence address and the fee address in patent applications will continue to be permitted.

The practitioners associated with a customer number may still be changed by filing a request or form PTO/SB/124.

Questions regarding batch updates or Customer Number practice should be directed to the Electronic Business Center by telephone to 866-217-9197 (toll-free), 703-305-3028, 703-308-6845 or by e-mail to [email protected].

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Revised Amendment Practice – Image File Wrapper - http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/moreinfoamdtprac.htm

Image File Wrapper - http://www.uspto.gov/web/patents/ifw/index.html

Recent Patent-Related Notices (published in O.G., F.R., etc.)-http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

Questions of a General Nature - Inventors Assistance Center- 800-PTO(786)-9199

Electronic Business Center – Customer Numbers, PAIR, EFS - http://www.uspto.gov/ebc/ or (703)305-3028

Further Information Contacts

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Check the USPTO web site for important announcementsCheck the USPTO web site for important announcements

New

July 29, 2003 72

Revised Amendment Practice Web PageRevised Amendment Practice Web Page

July 29, 2003 73

Image File Wrapper Web PageImage File Wrapper Web Page

July 29, 2003 74

Recent Patent-Related NoticesRecent Patent-Related Notices

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Office of Patent Legal Administration – (703) 305-1616 or e-mail to [email protected]

IFW – Final Rule – Jay Lucas (703) 308-6868, Robert Clarke (703) 305-9177, or Robert Spar (703) 308-5107

Amendment Practice – Elizabeth Dougherty (703) 306-3156, Eugenia Jones (703) 306-5586, or Joe Narcavage (703) 305-1795

Access under 37 CFR 1.14 – Karin Ferriter (703) 306-3159, or Michael Lewis (703) 305-5585

Power of Attorney and Assignment (NPR) – Karin Ferriter (703) 306-3159

Reexamination- Jerry Dost (703) 305-8610 or Ken Schor (703) 308-6710

Reissue- Joe Narcavage (703) 305-1795 Electronic Filing, CDs – Michael Lewis (703) 305-5585 or Jay Lucas

(703) 308-6868

Information ContactsInformation Contacts

July 29, 2003 76

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Recent Patent-Related Rule Making and Changes in USPTO Practice

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