Updates To Patent It Yourself (12th & 11th eds.)
PATENT IT YOURSELF (12TH ED.—2006 OCT.)
UPDATES TO ARRANGED BY DATE POSTED
(Updates to the 11th ed. are typed after the updates to the 12th.)
----------2006 Oct 1:----------
Ch. 13, Sec. E.2: Error In Withdrawn Claim Typing Instructions--p. 358, Col. 2, 4th line, change “and is not” to –but since it is still pending it must be--.
----------2006 Oct 1:----------
Ch. 10: PTO Radically Changes Petition To Make Special Program--p. 283: Note the following, which radically changes the Petition To Make Special program:
The Petition To Make Special (PTMS) program, described in Sec. P beginning on p 283, has been almost completely changed. The only parts left intact are Petitions To Make Special based on Health or Age; all other petitions must be made under a new Accelerated Examination Program (AEP).
If you want to make your application special based upon your health or age, Sec. P of Ch. 13 is still valid and you may file a petition using this section and Form 10-9.
If you want to make your application special based upon any other reason whatsoever, including those that are mentioned in Sec. P, or any other reason, you must use the new AEP. However the AEP is extremely difficult and very time-consuming to implement. To follow this program you must file a PTMS Under AEP (PTMSUAEP) at the time of filing your application and you must file the application electronically using EFS-Web. The PTMSUAEP is Form SB28, available on the EFS web site (www.USPTO.Gov/ebc, then File/EFS-Web Unregistered eFilers, then Electronic Filing, then efiling Forms). The PTO estimates that form SB28 will take 12 hours to complete!
You must first make a search, then prepare an Information Disclosure Statement citing the references in the search. you must also identify the limitations of the claims that are disclosed in the references, how the claims are patentable over the references, discuss the utility of the invention, list references that may be disqualified as references because they came from the same organization (see 35 USC 103(c)), state where each limitation of the claims finds support in the specification, detail the search that was made, including where it was made, and state the reason for accelerated examination.
The application may not have over three independent and 20 total claims and must claim one invention only. The fee for the PTMSUAEP is $130 and is in addition to the EFS-Web filing fee of $425.
In return, the PTO will endeavor to process your entire application to patent in less than 12 months.
For more information, see the Notice in the Official Gazette of 2006 July 18. The PTO has provided samples of Request For Expedited Examination at http://www.uspto.gov/web/patents/accelerated/
If you've already filed, it's too late to file a PTMSUAEP in your pending application, but you can circumvent this restriction by filing a continuation application and filing the PTMSUAEP in the continuation.
Warning:Unless absolutely necessary, I strongly advise you not to file a PTMSUAEP since it forces you to make very restrictive statements and admissions that could severely cripple any patent that you get if you ever need to use it in licensing or in court. (Ch. 10:Sec. P.)
----------2006 Nov 12:----------
Ch. 6: How To Use A Lawyer--p. 121:Add the following sidebar:
--How To Use A Lawyer
I have seen many instances where inventors have used a patent lawyer or agent (hereafter practitioner) to handle their patent application and have been very disappointed:they may be left bereft of any knowledge of the status of their application, feel gypped, and/or be left with an abandoned application without good cause, among other things. If you do use a practitioner to handle your patent work, below are some things to do to make sure these misfortunes don’t happen to you.
1. Before using a practitioner at any stage of the process, please read PIY or the appropriate parts; it can be invaluable to explain the procedures and law, to make the best use of the practitioner, and to save practitioner fees and the practitioner’s expensive time.
2. Make sure the practitioner sends you a copy of each and every document (letter or official paper) that they generate for you or receive on your behalf.
3. Mount every paper you receive from the practitioner in a file, keeping official papers, bills, and letters separate.
4. Make sure you understand everything the lawyer does or proposes to do for you and why the practitioner is taking this course of action. Almost every possible action is explained in PIY, but if not, ask the practitioner to explain it to you. You’re paying the practitioner and are entitled to know what and why the practitioner is doing or proposes to do anything.
5. Find out in advance the cost of every task the practitioner intends to perform for you and make sure the practitioner understands that you need to approve each and every fee in advance. Have the practitioner agree to obtain your advance approval if any fee will be exceeded; you don’t want any open billing. Also make sure the practitioner agrees to send you bills with disbursements itemized and kept separate from the practitioner’s fees and that the bills state the basis (time or fixed rate) for the practitioner’s fees.
6. If you can’t communicate with the practitioner, feel that the practitioner is not acting competently, or don’t understand what the practitioner is doing and are unable to obtain an adequate explanation, find another practitioner and dismiss the old practitioner. You are entitled to dismiss your practitioner at any time (with rare exceptions) and are entitled to obtain your file without charge, if you haven’t kept a copy of your papers as recommended in items 1 and 2 above. The file belongs to you.-- (Ch. 6, Sec. F)
----------2006 Nov 26:----------
Ch. 13: Error In Dates--p. 375: In line 7, delete “for”; lines 14 and 15, change “Aug 14” to –Oct 12--. (Ch. 13, Sec. Q.1.--)
----------2006 Nov 28:----------
Ch. 3: PTO Eliminates Disclosure Document Program--p. 54: Note the following: The PTO has eliminated the DDP as of 2007 Feb 1. I disagree strongly with this decision since I know that many inventors have used the DDP to record conception when they lacked witnesses and didn’t have enough time to write a PPA. (Ch. 3, Sec. H)
----------2006 Dec 4:----------
Ch. 8: Correction Of Some Solecisms--pp. 188 and 193: In line 16 (p. 188) change "a few 'saids' an 'wherebys,' but" to --a few 'saids' and 'wherebys,' but--. In line 11 (p. 193) change "be sure write it" to --be sure to write it--. (Ch 8, Sec. I.1.)
----------2007 Jun 19:----------
Ch. 4: Will A Contingent-Fee Litigator Take Your Case?--p. 84, after Factor 62 add:
--63. Will A Contingent-Fee Litigator Take Your Case? Before filing, consider whether, if any patent you get is infringed, is there likely to be enough sales of the infringing device or process by a financially responsible defendant-manufacturer to get a contingent fee litigator to represent you on a contingent-fee arrangement. If there aren’t enough sales, or if the infringers are fly-by-night, irresponsible operators, most contingent-fee litigators won’t take your infringement case, even if you have a strong patent which is clearly infringed. In other words, the law is far more accessible when substantial amounts are involved.-- (Ch. 4, Sec. D)
----------2007 Jun 19:----------
Ch. 15: Patent Term Calculator--p. 393:Insert --Patent Term Calculator:A law firm has provided a patent term calculator at http://ssjr.com/tools/toolshell.aspx?tl=1. Simply enter your patent’s Earliest Effective Filing Date (e.g., if your patent issued from a divisional application, enter the filing date of the parent (originally filed) application), the Filing Date of the Application that issued as the patent (this date will be the same as the Earliest Effective Filing Date if your patent did not have any parent cases), the patent’s Issue Date, and any Term Adjustment. The calculator will then calculate the term of your patent.-- (Ch. 15, Sec. F)
----------2007 Jun 19:----------
Ch. 10: Missing Digit In Mathematical Expression--p. 253:Col. 2, 11th line up, insert a “2” under the square root sign. (Ch 10, Sec. C)
----------2007 Jun 19:----------
Ch. 10: Drawing Rules Not Being Strictly Enforced--p. 259:Col. 2, at end of section add, --Although the PTO has not published anything official, current practice indicates that the PTO is not rigidly enforcing its drawing rules. As a result some patents are issuing with sloppy drawings. I recommend that you file well-executed drawings, however, since these will avoid making a negative impression on your examiner or on any judge who may have to rule on your patent.-- (Ch. 10, Sec. D)
----------2007 Jun 19:----------
Ch. 10: Error In Filling Of Form--p. 281: In the body of the form, the filled-in author’s name should be typed in all capital letters, viz., --PHILLIPS-- (Ch. 10, Sec. N)
----------2007 Jun 19:----------
Ch. 8: Don’t Say Preferred Embodiment--p. 177, Col. 2, Items j and k, change “Preferred Embodiment” to –First Embodiment (two occurrences)--. (Ch. 8, Sec. B)
----------2007 Jun 19: :----------
Ch. 8: Writing Clearly--p. 190:Col. 1, after l. 13 add, --Write clearly, not only so you can be understood, but also so that you will not be misunderstood.-- (Ch. 8, Sec. I.1.)
----------2007 Jun 19:----------
Ch. 15: Beware of Published Application Scams--p. 395, Col. 2, after end of Sec. G, add,--Recently I filed for a client a PCT application which the PTO published in due course. Shortly thereafter the client received in the mail an official-looking “bill” from an official sounding organization in Fla., listing the details of his PCT application and asking for $1629.30 for “Charges For Registration”. This is a complete scam. I complained about this to the Fla. Attorney General and found that they were already investigating this organization for other scams. You may get a similar “bill” if your regular patent application is published, so beware. Ask an attorney or your own state’s attorney general if you receive any similar “bill” that’s not from a source with which you’re familiar.-- (Ch. 15, Sec. G.)
----------2007 Jun 19:----------
Ch. 15: No More Automatic Injunctions--p. 407, Col. 1, after last line add, --In 2006, in eBay v. MercExchange, the US Supreme Court held that even if a court finds that a patent is valid and infringed, the patent owner is no longer automatically entitled to a court order enjoining against further infringement. They held that the trial court shouldn’t issue an injunction unless the patent owner shows a balance of equity in its favor, e.g., the patent owner is selling products employing the invention and would be damaged by letting the defendant continue to infringe. This in effect can force a patentee into granting a compulsory license of the patent.-- (Ch. 15, Sec. M)
----------2007 Jun 19:----------
Ch. 5: Easier To Invalidate Or Reject On Multiple References--p. 108, Col. 2, in Factor 14, and p. 345, Fig 13D, in Item 29 add:
--In 2007, in KSR v. Teleflex, the US Supreme Court made it easier for the PTO or the courts to reject claims or hold patents invalid on a combination of references. Prior to this, the cases held that an invention should not be held obvious over several prior-art references unless there is a suggestion, motivation or teaching that the references can or should be combined. This case held that there must be some apparent reason in the prior art to justify combining the references. E.g., the existence of a problem can make it obvious to try various solutions; the prior art doesn’t have to be directed to the precise problem, so long as the references still perform their same functions. If you argue that the combination was not suggested by the prior art, argue (if applicable) that the problem solved by your invention is different and the references perform new functions in your combination.-- (Ch. 5, Sec. F.5 and Ch. 13, Sec. D)
----------2007 Jun 27:----------
Ch. 5: Published Patent Applications Are Prior Art As of Their Filing Date--p. 99, Col. 2, line 6 up, after “and foreign),” insert:--published patent applications (effective as of their filing date), (Ch. 5, Sec. E.d.i.)
----------2007 Jun 27:----------
Ch. 13: Patents and Published Patent Applications Are Prior Art As of Their Filing Date--p. 335, Col. 1, after line 7, insert:
--31. Patents and Published Patent Applications Are Prior Art As of Their Filing Date As Well As Their Publication Date
Remember (Chapter 5) that patents and published patent applications (PubPAs), unlike other publications, are effective as of their filing date, in addition to their publication date. So if the examiner rejects your claims on a patent or PubPA, you may have to consider both dates when formulating your response. If the patent or PubPA was published over a year before your filing date, it’s a statutory bar (Sec. 102(b)) so you can’t swear behind it (see Sec. D.3. below) and thus only the publication date is relevant. If the patent or PubPA was published less than a year before your filing date, it’s prior art as of its publication date (Sec. 102a) and as of its filing date (Sec. 102(e)). You must swear behind the earlier (filing) date by proving an earlier date of invention—see Sec. D.3. below and Ch. 5, Sec. E.1.b.-- (Ch. 13, Sec. E.d.i.)
----------2007 Jul 9:----------
Ch. 10: PTO Site Doesn’t Accept Documents Created With Adobe Reader 8.0--P. 290:If you created any PDF form with Adobe 8.0 (such as the IDS--Form SB08a) and you try to file it via EFS-Web, the EFS may reject it, stating you’re using the wrong version of Adobe Reader. You have to use Adobe Reader 7.0.9. Here’s how:Remove Adobe 8.0 from your computer and then go to www.Adobe.com. Click “Get Adobe Reader”, then “Choose a different version”, then fill in the blanks to describe your computer, and then DL and install Adobe 7.0.9. If you’ve already created a document with Adobe 8.0, open it with Adobe 7.0.9 and re-save it with 7.0.9 in order to convert it to Adobe 7.0.9. Then you will be able to upload it successfully. The PTO says they are working to make their system compatible with PDFs created with 8.0. (If you do replace your Adobe with the earlier version, be sure to change any references [e.g., in your scanner] from Adobe 8.0 to 7.0.9.) (Ch. 10, Sec. R).
----------2007 Sep 7:----------
Ch. 6: Additional Free Search Sites—p. 156, Col. 1, after line 7, add the following additional free search sites:
· Google Patents (www.google.com/patents) an excellent resource that includes US patents back to the beginning. I recommend you always make a search on this site.
· Patent Monkey (www.PatentMonkey.com) is another good search site that goes back to 1976 but includes the maintenance-fee status (expired or in-force) and claims, abstract or description on the front page.
· Clearly Understood:http://www.clearlyunderstood.com/ is a comprehensive patent services site that requires registration but also provides an additional searching capability. (Ch. 6, Sec. L, Part 1)
----------2007 Sep 7:----------
Ch. 6: Science Search Engine Available—p. 163, in col. 2, after Sec. O, insert the following Section P and change existing Sec. P to Sec. Q:
P. Science Search Engine Available
The Internet has a science-specific search engine, www.Scirus.com, for searching more than 415 million science-related pages. According to the site, Scirus helps you quickly locate scientific information on the Web by filtering out non-science sites, locating peer-reviewed articles such as PDF and PostScript files, which other search engines may miss, and searching a more comprehensive combination of web information, preprint servers, digital archives, repositories and patent and journal databases. Scirus goes deeper than the first two levels of a Web site, thereby revealing much more relevant information. (Ch. 6, Sec. O)
----------2007 Sep 7:----------
Ch. 8: Copyright Notice In Specification—p. 196, in col. 2, above the “Trademarks” sidebar, insert –If you want to put a copyright or mask work notice in the specification or drawings to provide notice that your program listing, mask work, or other written material in the specification is covered by copyright, you may do so since Rule 71(d) (37 CFR 1.71(d)) permits this. Rule 71(e) states that the notice shall be the first paragraph in the specification and the form of the notice shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever. (Ch 8, Sec. I.2.k)
----------2007 Sep 7:----------
Ch. 10: You Can Save The Fillable PDF Declaration Form—p. 290: If you file a patent application via EFS-Web you must include a Data Sheet (Form SB14). For the patent application declaration, you may use a simple Declaration Form:PTO/SB/01A. (If you file a paper application by mail without a Data Sheet you must use the longer Declaration Form:PTO/SB/01.) These forms are available on the PTO’s web site and can be filled in online. However these forms state, “You cannot save data typed into this form. Please print your completed form if you would like a copy for your records.” Thus to obtain a PDF copy of a completed Declaration Form, it was necessary to fill it online, print it, and scan it to PDF (or print the blank form, fill it by hand or with a typewriter, and then scan it to PDF). However there is a way to save the filled-in Declaration Form without printing and scanning it. First install the free file converter CutePDF Writer onto your computer. Then after you fill in the Declaration Form online, open the printer window and select in the Name window CutePDF Writer. Then click OK and select a suitable Save location, such as your Desktop, and you’ll have a PDF file of the Declaration form. (Ch. 10, Sec. R)
----------2007 Sep 7:----------
Fee Schedule Correction--Appendix 4: Do not use the existing Fee Schedule. Instead note the following and use the schedule below until 2007 Sep 30:
The PTO stated in the summer of 2006, as the 12th ed. went to press, that the usual annual fee increase to cover inflation would likely occur as usual on 2006 Oct 1. Accordingly I put the proposed new fees in the 12th ed. with a warning that you should check the PTO’s site or this site first. The PTO announced about 2006 Sep 30 (see www.USPTO.Gov) that, due to anticipated action by Congress, the current fees would continue beyond Oct 1. Accordingly the fees in PIY, 12th ed. are currently slightly too high. The correct fees are below and in PIY11, on the PTO’s site under Patents/Fees, and are on the ESF-Web Fee Payment pages. ($$$/$$$ = Large Entity/Small Entity)
Filing Fees
Disclosure Document Filing 10
Utility Patent Paper Filing 1000/500
Utility Patent Electronic Filing 1000/425
Design Patent Filing 430/215
Plant Patent Filing 660/330
Provisional Patent Application Filing 200/100
Provisional Patent Application Late Filing of Fee or Cover Sheet 50/25
Provisional Patent Application: Correct Inventors or Convert RPA to PPA 50
Fee For Each Independent Claim Over Three 200/100
Fee For Each Claim Over Twenty (Independent or Dependent) 50/25
Surcharge, Multiple Dependent Claims 370/185
Petitions To Commissioner
All petitions except as noted below 130
Expedited Examination of Design Application (Rocket Docket) 900
Petitions To Revive Abandoned Application
Unavoidable Delay 500/250
Unintentional Delay 1500/750
Extensions To Reply To Office Actions
First Month 120/60
Second Month 450/225
Third Month 1020/510
Fourth Month 1590/795
Fifth Month 2160/1080
Appeal To Board Of Appeals
Filing Notice Of Appeal or Brief 500/250
Oral Hearing 1000/500
Application Issue Fees
Utility Patent 1400/700
Utility Patent Publication Fee 300
Prior-Art Citation Fee (against published application) 180
Design Patent 800/400
Plant Patent 1100/550
Certificate To Correct Patent (Applicant’s Mistake) 100
Miscellaneous Fees
Reexamination Fee, Ex Parte 2520
Reexamination Fee, Inter Parties 8800
Late IDS Fee 180
Recording Assignment, per application 40
Surcharge, Bounced Check 50
Utility Patent Maintenance Fees
3.0-3.5 years 900/450
7.0-7.5 years 2300/1150
11.0-11.5 years 3800/1900
Late Charge (in six-month grace period) 130/65
Petition To Revive After Patent Expires (Unintentional Delay) 1640
Petition To Revive After Patent Expires (Unavoidable Delay) 700
Copy Fees
Certified copy patent application as filed 25
Printed Copy of Patent 3
Copy plant patent in color 15
Certified copy of file and contents of patent file 200
Certified copy of patent assignment record 25
Disclaimer of claims or terminal part of patent 130/65
Dedication of Entire Term or Terminal Part of Patent N/C
Trademark Fees
Filing Application For Registration On Paper 375
Filing Application For Registration On-Line 325
New Fees Effective 2007 Sep 30: The Official Gazette-Patents of 2007 Aug 28 announced that new and slightly higher PTO fees would be effective 2007 Sep 30. However the PTO has not yet made the exact amounts of these fees certain because of pending legislation. The PTO’s announcement listed two alternative sets of fees; the specific set that will be adopted depends upon whether the legislation is enacted before the effective date. Rather than list both sets of fees now, which would be confusing, I will post the new fees when they are finalized. You should pay the above fees until Sep 30. If you have to pay any fee after Sep 30, and I have not posted the new fees yet, you should check the PTO’s site prior to paying any fee. The PTO posts all current fees on its site www.USPTO.Gov:go to Patents, then Tutorial—Fees, then Current Fee Schedule. Alternatively if you file online you can obtain the current filing fees from the Fee Payment Page in the online filing process. Remember that although a statute requires the PTO to list the Basic (Filing), Search, and Examination fees as separate components, you must always pay the sum of these three components in one lump sum when you file.
----------2007 Sep 7:----------
Ch. 14: New Continuation Rules Limit Number of Applications In The Chain—p. 380, in col. 1, before Sec. B, insert the following:
New Continuing Application Rules Effective 2007 Nov 1:
In an effort to reduce the number of pending applications, the PTO has issued the following new rules pertaining to continuation, divisional, and CIP applications. I and many other attorneys and inventors don’t think these new rules will have the desired effect, the new rules have been challenged in court, and they will make patent application practice far more complicated, but we will have to live with them until otherwise notified. The actual notice and the new rules take 129 pages in the Federal Register of 2007 Aug 21!
1. An applicant may file only two continuation applications and one RCE, unless the applicant can show that the content of further filings could not have been previously submitted. This applies to each claim family. Rule 78
2. An applicant may file a divisional application only if the prior-filed application is subject to a requirement for restriction and the divisional application claims only a non-elected invention(s) that has not been examined. Divisional applications can be filed in parallel or series as long as one application from the parent application family is pending. An applicant may not file a divisional application if they traversed the requirement for restriction. Rules 142, 145
3. An applicant who files a continuation-in-part application must identify those claims that are supported by the priority application. Rules 142, 145. (Ch. 14, Sec. A)
----------2007 Sep 7:----------
Ch 9: Limitations On Number Of Claims—p. 221, col. 2, before Sec. C insert:
Limitations On Number Of Claims: An applicant may not file more than five independent and 25 total claims unless they file an Examination Support Document (ESD). An applicant may not file more than 15 independent and 75 total claims in any application family (parent, continuation, etc.—see Ch. 14), unless they file an ESD. Rule 265. This rule applies to all applications that have not received a first action on the merits by 2007 Nov 1. An ESD must include a search statement identifying the search areas and terms used, a list of relevant references, identification of the claims limitations of each reference, an explanation of the patentability of each independent claim, including why it would not be obvious to combine any relevant references, a showing of support in the specification (and priority document if relevant) for the limitation of each independent claim. Rule 75. (Ch 10, Sec. B.2.)
Ch 13: Limitations On Number Of Claims—p. 335, col. 1, before Sec. C insert:
31. Limitations On Number Of Claims
Bear in mind the rules discussed in Ch 10, Sec. B.2 regarding the number of claims you may file in any application. You may not amend your application to cause it to have more than five independent and 25 total claims unless you file an Examination Support Document (ESD). Rule 75. Also you may not file more than 15 independent and 75 total claims in any application family (parent, continuation, etc.—see Ch. 14), unless you file an ESD. Rule 265. This rule applies to all applications that have not received a first action on the merits by 2007 Nov 1. An ESD must include a search statement identifying the search areas and terms used, a list of relevant references, identification of the claims limitations of each reference, an explanation of the patentability of each independent claim, including why it would not be obvious to combine any relevant references, a showing of support in the specification (and priority document if relevant) for the limitation of each independent claim. (Ch 13, Sec. A)
Ch 13: Requirement For Restriction—p. 373, col. 2, add to end of Sec. M:
If your application contains claims to more than one invention, you may file a Suggested Requirement For Restriction and an election of the claims that you wish to be examined. Rule 142. (Ch. 13, Sec. M).
Ch 14: Presumption Of Similar Inventions—p. 380, col. 1, before Sec. B add:
Presumption Of Similar Inventions: If you file any continuing applications that have the same owner and have a claimed filing or priority date within two months of the claimed filing or priority date of a previous application and name at least one inventor in common with the application, you must identify them. The PTO will presume that the present application and the other application(s) or patent(s) contain at least one patentably indistinct claim if the other commonly owned application or patent also has: substantial overlapping disclosure with the application, and the same filing or priority date as the claimed filing or priority date of the other application. This presumption may draw a double patenting rejection but may be rebutted. Rule 78. (Ch. 14, Sec. A).
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Updates To Patent It Yourself (11th ed.—2005 Apr.) Arranged By Chapter
Ch. 1: SCI3 No Longer Searches: On p. 1/13, col. 2, delete the last full paragraph (beginning with ". Sunnyvale Center ") and delete the last paragraph (which continues to p. 1/14) as SCI3 no longer does any searches.
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Ch. 3: Invention disclosure (Fig 3C): On p. 3/13 (Fig 3c), change paragraph numbers “5”, “6”, and “7” to –6–, –7–, and –8– and insert a new paragraph after paragraph 4. as follows: –5. Operation: The user operates the can opener in the same way as any squeeze-and-turn opener for any size can. –---------------------------------------------------------------------
Ch. 3: File Disclosure Documents In PTO (Sec. H): On p. 3/15, col. 2, delete 1st paragraph. (Some libraries have terminated the DD filing service and it's best to file Disclosure Documents directly in the PTO.)
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Ch. 6: PTO Has Eliminated Partnership PTDLs (p. 6/33): As the PTO eliminated Partnership PTDLs as of 2006 Jun 1, please cancel the paragraph beginning with "Partnership PTDLs . . ." on p. 6/33, col. 2.
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Ch. 8: Program Listings Must Be In ASCII Format; Microfiche No Longer Acceptable (Secs. G and I.2.k.): Ch. 8, Sec. G. states that a computer program listing can be submitted in “machine-readable form (object code)”, but PTO Rule 52(e) (37 CFR 1.52(e)), discussed in Sec.I.2.k, states that the listing must be submitted in ASCII format. The PTO rule prevails, so all listings must be in ASCII format. Therefore unless you can somehow supply the object code in ASCII, you will have to submit the source code. Also Rule 52(e) no longer permits submission of microfiche, so all program listings that are longer than 300 lines must now be submitted on duplicate CDs that are in ASCII and comply with the other provisions of Rule 52(e).
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Chs. 8 and 13: What You Say In Application And Amendments Can Be Used Against You (Ch. 8, Sec. I.2.g.; Ch. 13, Sec. B.11.): Some recent appellate decisions have relied on wording in the specification or amendments to limit the scope of the claims. E.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) and Vehicular Technologies Corp. v. Tital Wheel International, Inc., 212 F.3d 1377, 1380 (Fed. Cir. 2000) held that an object of the invention that recited a specific arrangement limited the scope of the claims to that arrangement so as to prevent a finding of infringement. C. R. Bard, Inc. and Davol, Inc. v. United States Surgical Corp., #04-1135 (2004 Oct 29) held that even though some claims were limited to a pleated surface and some were not, since the Summary of the Invention in the specification and an attorney stated in an amendment that a surface was pleated, all claims would be limited to a pleated surface and therefore were not infringed. To avoid these problems I recommend the following changes:1. Omit the Objects and Advantages section entirely (many patent attorneys are now doing this) or don’t name it “Objects and Advantages”. Instead just call the section “Advantages”.2. Don’t refer to “the invention” or call any embodiment “preferred”; instead simply refer to “this embodiment” or a “first embodiment”.3. Include a disclaimer as part of the Advantages. One way to do this is as follows: Accordingly one or more embodiments of the present invention may have one or more of the following advantages: . . .”.4. Write the Advantages carefully so that they don't recite any specific details or arrangements that could be regarded as limiting. E.g., don’t state "It is an advantage to provide a console between the seats”. Instead state, “It is an advantage to provide a more accessible console.”. Be sure that your invention and any possible variation will meet every advantage. Also use weasel words so that no Advantage will be too broad or absolute. E.g., don’t state, “One advantage is to avoid the problem of . . ." Rather state “One advantage is to reduce the problem of . . .".5. Keep the Summary and the Abstract general; don’t include any details of the invention that you would not want to be used to limit the invention. I advise simply paraphrasing your broadest claim for the Summary.5. If you eliminate the Advantages section entirely, you can indicate the advantages by noting the problem solved by the invention in the Background--Prior Art section and stating the advantages without using this word in the detailed description section. E.g., simply state how it works better.6. In the Remarks part of any Amendment, never make any argument for the patentability of any claim that refers to any features that are not in that claim. E.g., if you’re arguing the patentability of a claim that simply recites a surface, don’t state that the cited prior-art patent to Smith doesn’t show a pleated surface. If you’re arguing the patentability of a narrower claim that recites a pleated surface, be sure to first argue the patentability of the broader claim without mentioning the pleated surface and then state that the narrower claim is additionally or independently patentable because it recites pleats, which Smith doesn’t show.
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Ch. 9: Sample Claim Has An Inconsistent Antecedent: (Sec. G.1). On p. 9/12, col. 2, the last "said" clause in the sample claim has an inconsistent antecedent. Thus in the last two lines of the claim, ". . . said rigid member . . ." should instead read --. . . said sheet of rigid material . . .--.
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Ch. 9: Published Patent Application Cited Incorrectly: (Sec. K): On p. 9/27, col. 1, 4th par., last line, “U.S. Pat. No.” should read –U.S. Pub. Pat. Appn. No.--.
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Ch. 9: Each Independent Claim Must Stand By Itself: (Sec. K). Some inventor-readers of PIY have tried to recite, in a second or later independent claim, a component of the invention in a manner that requires antecedent support, even though the antecedent support exists only in a previous claim and not in the current claim. E.g., some inventors have tried to recite, in a second independent claim, “a second lever” even though the first lever has been recited only in a previous claim. Others have tried to recite “said wheel” in a second independent claim, even though a wheel has been recited only in a previous claim. This type of recitation is not permitted. Each independent claim must stand completely by itself; i.e., it may not refer to, incorporate, or be based in any way on any previous claim.
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Ch. 10: Mensuration Error (Fig 10B): A reader from Detroit kindly pointed out a few errors in Fig 10B on p. 10/9:In the U.S. Letter Size diagram, the horizontal dimension "176mm (6 15/16")" should be --175 mm (6 7/8")--. Under the heading "U.S. Letter Size", ". . . or 216 mm x 269 mm" should read –. . . 216 mm x 279 mm–.In the A4 Size diagram, the horizontal dimension "170 mm (6 5/8")" should be –170 mm (6 11/16")–.
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Ch. 10: Declaration Form For Multiple Inventors: (Sec. H, p. 10/17-19 and Form 10-1 in Apx. 7): The Declaration form for for a patent application provided in the Appendix (Form 10-1) and as completed in Ch. 10 (Figs 10IA and 10IB) has spaces for multiple inventors. However the Declaration form on the PTO's web site (Form PTO/SB/01) now has spaces for only one inventor. If your application has more than one inventor you may still use Form 10-1 in PIY, or if you want to use the forms on the PTO's site, the additional inventors can be listed and should sign on form PTO/SB/02.
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Ch 10: PTO Implements EFS-Web Application Filing System (Sec. I, p. 10/20) The PTO has implemented an Electronic Filing System using the Worldwide Web or Internet (EFS-Web) that enables patent applications, amendments, etc. to be filed over the Internet. It replaces the former EFS, which was difficult to learn and use. The EFS-Web is simple to use and learn and represents a considerable improvement. However it still requires some learning, the conversion of all documents to the Portable Data Format (PDF), and a good chunk of time, so if you’re filing just one application, it will still be easier and faster for you to mail a paper copy of the application to the PTO. However the EFS-Web is a very sexy, high-tech, and gratifying experience, which also has the following practical advantages: (1)you can file an application anytime and from anywhere, (2) you can obtain instant confirmation of receipt of documents by the PTO, (3) you can send an application to the PTO without having to go to the Post Office to get an Express Mail receipt or having to wait for a postcard receipt, (4) you can file an application without having to prepare an application transmittal, a fee transmittal, receipt postcard, or check or Credit Card Payment Form (CCPF), and (5) you get a $75 reduction in the filing fee.If you’re ready to file and are game for a new adventure in the world of EFS-Web, do the following:1. Become A Registered eFiler If Time Permits: If you can wait several weeks to file, I recommend you become a registered eFiler. You’ll have to jump through several hoops and deal with red tape, including filling out a form to obtain a customer number, sending a notarized certificate to the PTO, obtaining acess codes, and calling the PTO to confirm, but as a registered eFiler you’ll be able to track your application’s progress and file additonal documents, such as amendments, online. To register go to www.uspto.gov/ebc/index.html, click on Register Now, and follow the detailed instructions. If you can’t wait several weeks, you can use EFS-Web to file an application as an unregistered eFiler and register later.2. Prepare The Application As Usual: Before you go online, prepare the entire application as instructed in Chapters 8 to 10. Include the drawings, specification, claims, abstract, and declaration. Omit the Application Transmittal form, Fee Transmittal form, Receipt Postcard, Non-Publication Request (NPR), and check or CCPF since these are part of the Data Sheet (see next par.) or are filled out online. Sign and date the Declaration as usual. (If you’re filing a PPA include the drawings and specification (claims and abstract are optional) and fill out a PPA Cover Letter or Sheet (Form 3-5 in Appendix or Form PTO/SB/16.)
3. Convert Application To PDF: Convert all documents of the application (Drawings, Specification, including Claims and Abstract, and signed Declaration) to PDF documents. There are free software programs such as CutePDF that can convert word processing documents and drawings to the PDF format. To convert signed documents, such as a signed Declaration (PTO/SB/01), use a scanner to scan the documents directly to PDF files. I use a Canon LiDE scanner, but others work as well. It’s easiest if you convert each part of the application to a separate one-or-more-page PDF file and give it a descriptive name, such as Dwgs.pdf, Spec.pdf, Dec.pdf, and NPR.pdf. When you scan to PDF, set the scanner to Black and White (no Greyscale or Color) and 300 or 400 dpi for good clarity. Put all of the PDF application files into a separate PDF Application Holding Folder with a suitable name (e.g., Deraillieur Appn PDFs) to keep them together and have easy access to them.
4. PDF Data Sheet: Bring up a fillable application data sheet form by going to USPTO.gov/ebc, then click EFS-Web Unrgistered eFilers, then Electronic Filing, then eFiling Forms, or go directly to www.uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf. Open the SB14 form, check Highlight required fields, and fill them out. The program will automatically fill in the header blanks. Check Request Not To Publish (recommended) if you don’t want to have the application published, but remember to file a revocation of your Non-Publication Request if you foreign file later. Then save the completed form using a suitable name, such as Data.pdf, in the PDF Application Holding Folder with your other PDF application forms.
5. Sign-On: Go to www.uspto.gov/ebc/index.html. If you haven’t registered as an eFiler, click on EFS-Web Unregistered eFilers and fill in your name and email and the type of application (Design, Utility, Provisional, or US National Stage (371)) and click Continue. If you have registered, click on EFS-Web Registered eFilers. Then fill in your Digital Certificate and Password, which you already have. You can recover the Digital Certificate by browsing to Program Files/USPTO in your computer and opening the file with your name and an .epf suffix, e.g., John Smith.epf. Click Authenticate and then certify your identity, select New application, and the type of application and click Continue. If you get stuck at any time, call the PTO’s Electronic Business Center at 866-217-9197.6. Application Data: On the Application Data page fill in the title of the invention, a docket number for the application of your choosing (optional), and your name and Customer Number or address. It’s best to copy this data from your Data Sheet so that everything will be consistent. If you’re registered, click New application. (Even if you’re not registered you can obtain a Customer Number, which will take a few days but will save you from having to type your address each time.). Click Continue.7. Attach PDF Files: In the Attach Documents page click the Browse button and find the PDF Application Holding Folder which contains the PDF files of your application. Select one of your PDF application files, e.g., the Data file, click open, and you should see it in the Files To Be Submitted box adjacent the Browse button. Then open the Category pull-down menu adjacent the middle window and select Application Part. Then open the rightmost pull-down menu and select Application Data Sheet. (Make sure the No button opposite Does your PDF file contain multiple documents? is checked since it’s more difficult to work when everything is in one PDF document.) Then click the Add File button and another row of three windows will open. Repeat the above steps for each of your other PDF application files (e.g., Dwgs.pdf, Spec.pdf, Dec.pdf, and NPR.pdf), selecting the Document Description in the third window for each. (If you’re filing a PPA, the PPA Cover Letter or Sheet goes under Transmittal Letter in the third column.) When you’ve attached all of the PDF files in your PDF Application Holding Folder, click the Upload & Validate button at the bottom.
8. Review Documents: After a few minutes, you’ll eventually get a Review Documents page, which should show all of the documents you’ve attached. Make sure all parts of your application are listed and there are no errors. If any errors are indicated, you’ll have to go back and fix them. Sometimes the PTO’s server will reject one or more PDF documents because it uses non-embedded fonts or for another reason, e.g., it has been scanned to grey format. You will usuallly be able to fix an unacceptable PDF file by simply opening it and using the CutePDF program to convert it to another PDF file: this will eliminate the non-embedded fonts and the greyscale. Once everything is OK click Continue.
9. Calculate Fees: On the Calculate Fees page, select your entity size, which will usually be Small Entity, click the Filing, Search, and Exam boxes (and any other applicable boxes) and the Calculate button. Your subtotal and total filing fee will be entered in the applicable boxes. Note that the total basic filing fee for filing electronically is $425, $75 less than the $500 basic filing fee for filing by mail. Click Continue.10. Submit Application: This page will list all of your PDF files, a Fee-Info.pdf file, and the filing fee. If everything is OK, click the Submit button at the bottom to bring up a Congratulations! page with an assigned Application Number, Confirmation Number, and Total Fees due. Click the YES! I want to pay now button at the bottom.11. Review fees and select payment method: Unless you have a PTO Deposit Account or are set up for EFT, select Charge Credit Card, then the Start online payment process to bring up the payment page. Fill out the blanks and click the Confirm button at the bottom.12. Acknowledgment Receipt: If everything is OK you’ll get an Acknowledgment Receipt, which is analogous to the receipt postcard which was used for mailed filings. The Acknowledgment Receipt will list the Application (Serial) Number, the Confirmation Number, the application data and parts that you’ve filed. Congratulations! You’ve bypassed the Post Office, filed an application electronically, and have gotten an instant filing acknowledgment. Select Print This Page to print the page for your records. In due course you’ll get an official filing receipt by mail, as usual.13. IDS: As you know, you must generally file an IDS (Information Disclosure Statement) within three months after filing if you know of any relevant prior art. If you're a registered eFiler you can file an IDS online. Bring up a fillable IDS form by going to USPTO.gov/ebc, then click EFS-Web Unrgistered eFilers, then Electronic Filing, then eFiling Forms, or go directly to uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf. Open the SB08a form, check Highlight required fields, and fill them out. The program will automatically fill in the header blanks. Then save the completed form using a suitable name, such as IDS.pdf, and file it online in a similar manner as you filed the PDFs of the application. If you're unregistered you'll have to fax or mail the IDS. Remember that you don't have to accompany the IDS with copies of any US patents or published patent applications, but you do have to accompany it with copies of any foreign patents (with an explanation of relevance) and copies of any non-patent prior art. 2006Apr1.
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Ch. 10: Error In Filled-Out Form 10-1: (p. 10/18--Fig 10IA) In filled-out Form 10-3 (Fig 10IA on p. 10/18) the box “is attached hereto” should be checked instead of the box “was filed on …”.
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Ch. 10: Another Reason To File An NPR: (Sec I.1., p. 10/22) As stated on. p. 10/22 under “Box 16” in col. 1, if you file an NPR (Non-Publication Request) at the time of filing the application, your application will not be published before issuance, so you can avoid paying the stiff publication fee at the time of allowance. Another reason for filing an NPR is that when your application is published, your entire prosecution history will be open to the public on the PTO’s Public PAIR site. You may find this very undesirable since it will give your competitors and potential infringers a peek at your prosecution strategy and arguments before your patent issues.
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Ch. 10: Error In Filled-Out Form 10-3: (p. 10/23--Fig 10K) In filled-out Form 10-3 (Fig 10K on p. 10/23) some of the amounts in Item 2 (“EXCESS CLAIMS FEES”) are erroneous:• Under “Total Claims” the “Fee ($)” reads “$9” but should read —$25— and the “Fee Paid ($)” reads “$36” but should read –$100–.•• Under “Indep. Claims” the “Fee ($)”reads “$42” but should read –$100– and the “Fee Paid ($)” reads “$42” but should read –$100–.---------------------------------------------------------------------
Ch. 10: PTO Radically Changes Petition To Make Special Program: (Sec. P, p. 10/36): The Petition To Make Special (PTMS) program, described in Sec. P beginning on p. 10/36, has been almost completely changed. The only parts left intact are Petitions To Make Special based on Health or Age; all other petitions must be made under a new Accelerated Examination Program (AEP). If you want to make your application special based upon your health or age, Sec. P of Ch. 13 is still valid and you may file a petition using this section and Form 10-9. If you want to make your application special based upon any other reason whatsoever, inluding those that are mentioned in Sec. P, or any other reason, you must use the new AEP. However the AEP is extremely difficult and very time-consuming to implement. To follow this program you must file a PTMS Under AEP (PTMSUAEP) at the time of filing your application and you must file the application electronically using EFS-Web. The PTMSUAEP is Form SB28, available on the EFS web site (www.USPTO.Gov/ebc, then File/EFS-Web Unregistered eFilers, then Electronic Filing, then efiling Forms). The PTO estimates that it will tkae you 12 hours to complete the form! You must make a search, prepare an Information Disclosure Statement citing the references in the search and identifying the limitations of the claims that are disclosed in the references, state how the claims are patentable over the references, discuss the utility of the invention, list references that may be disqualified as references because they came from the same organization (see 35 USC 103(c)), state where each limitation of the claims finds support in the specification, detail the search that was made, including where it was made, and state the reason for accelerated examination. The application may not have over three independent and 20 total claims and must claim one invention only. The fee for the PTMSUAEP is $130 and is in addition to the EFS-Web filing fee of $425. In return, the PTO will endeavor to process your entire application to patent in less than 12 months. For more information, see the Notice in the Official Gazette of 2006 July 18. A Warning: Unless absolutely necessary, I strongly advise you not to file a PTMSUAEP since it forces you to make very restrictive statements and admissions that could severly cripple any patent that you get if you ever need to use it in licensing or in court. (2006Sep8)
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Ch. 11: Contingent-Fee Developers (Sec. B.1., p. 11/4): In addition to America Invents.com and BigIdeaGroup.net, another contingent-fee marketer is InventorsPublishing.com.
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Ch. 11: Toy Submissions (Sec. D, p. 11/8): If your invention is a toy, the toy retailer F.A.O. Schwartz has "toy auditions" in N.Y.C. To find out where and when the next audition will be held, go to http://www.fao.com/ and search for "Toy Audition". 2006 Apr 18. Also the Disney Store has been bought by Children’s Place and they are looking for educational, interactive, Disney or Pixar character, and innovative toys. Contact Moshe Dabah, Disney Stores New Product Development; Email- Mdabah@childrensplace.com. 2006 Aug 11.
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Ch. 13: Error In Claim Amendment Instructions (Sec. E.2., p. 13/29): On p. 13/39, col. 2, penultimate line, change “and is not” to –but since it is still pending it must be--. (2006Sep7)
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Ch. 13:, Supplemental Amendments (Sec. B, p. 13/14): Add a new section in col. 2 of p. 13/14 as follows:28. Supplemental RepliesAfter you file a " regular" amendment (see Secs. D to H below), you may see some errors or room for improvement and thus want to file a Supplemental Amendment or Reply. Under a new rule (37 C.F.R. 1.111 (a)(2)), you don't have the right to file a Supplemental Reply unless it is clearly limited to (a) canceling claims, (b) adopting any examiner's suggestions, (c) placing the application in condition for allowance, (d) replying to an Office requirement made after the first reply was filed, (e) correcting informalities, such a typographical errors, or (f) simplifying issues for appeal. So it behooves you to do your first reply (amendment) very carefully and to make it as complete as possible. I find that the best way to avoid the need for a Supplemental Reply is to do the first amendment well in advance of the due date, wait a day or two, and then review it again and polish and correct it as necessary.
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Ch. 13: Error In Section Reference (Sec. F, p. 13/41): On p. 13/41, col. 2, in the paragraph headed "Rule 8", last line, change "A27" to --B27--.
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Ch. 13: Replacement Drawings May Be Filed By Fax After Allowance (Sec. I): After a Notice of Allowance is sent, the PTO will now accept replacement drawings by fax. They state that even though the quality of the drawings is degraded by faxing, they will usually accept faxed drawings for publication. If you are paying the issue fee by credit card (recommended) or through a PTO deposit account, you can fax the Issue Fee Transmittal, Credit Card Payment form, and any needed replacement drawings to 703-746-4000. Official Gazette, 12 July 2005.
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Ch. 13: Pre-Appeal Conference. (Sec. J.4.): The PTO has instituted a new optional procedure whereby an applicant whose application has been finally rejected and who has decided to appeal can have a panel of examiners review the legal and factual bases for the rejections as part of the appeal process and before filing a brief. This procedure will avoid the need for filing the appeal brief if the panel agrees with you. The entire procedure is explained in a notice in the Official Gazette for 12 July 2005, but here is a brief summary. If you have not been able to obtain allowance from the examiner, and you have decided to appeal, here’s how to take advantage of the new pre-appeal review process: You must file a regular Notice of Appeal (Form PTO/SB/31) with the appropriate fee, which is currently $250. You must accompany the Notice of Appeal with a “Pre-Appeal Brief Request For Review” (PTO/SB/33--no extra fee), plus a “succinct, concise, and focused set of arguments” (no more than five pages at 1.5 line spacing) in support of your position. The three documents may be mailed, but the PTO prefers that you fax them to its new, central fax number, 571-273-8300. The PTO prefers that you use this process only where there are clear errors in fact or law and not where the issues are in grey areas, such as interpretations of the prior art or claim scope. A panel of three examiners, including a supervisor and the examiner of record, will review your arguments and issue a decision that either (1) continues the appeal because they agree with the examiner of record, (2) reopen prosecution and propose changes that will place the application in condition for allowance or advise that a further communication from the examiner will follow, (3) allow the application, or (4) dismiss your request because is fails to comply with the submission requirements. If the panel’s decision is alternative (1) or alternative (4), you must file the usual brief and fee within one month from the decision or within two months from the date you filed the Notice of appeal, whichever is longer.
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Ch. 15: Correction Of Instruction For Filling Out Certificate Of Correction: (Sec. C). On p. 15/4, under “Step 2:”, change “as if you were making an amendment (see Chapter 13) to the actual printed patent;” to –to the actual printed patent by sandwiching matter to be deleted in quotes and matter to be inserted by dashes;–.
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Ch. 15: Effects of Hurricane Katrina on Maintenance Fees: The PTO considers the effects of Hurricane Katrina to be an "extraordinary situation" within the meaning of 37 CFR 1.183 for the affected applicants and patentees. For those patentees who were unable to timely pay a patent maintenance fee due to the effects of Hurricane Katrina, the USPTO will sua sponte waive the surcharge in 37 CFR 1.20(i) for accepting a delayed maintenance fee payment when they file the maintenance fee payment with a petition to accept a delayed maintenance fee under 37 CFR 1.378(c). See 37 CFR 1.183.The PTO advises patentees who need to file a petition to accept a delayed maintenance fee payment due to the effects of Hurricane Katrina to promptly file a petition under 37 CFR 1.378(c) (using PTO form PTO/SB/66 – Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) accompanied by the applicable maintenance fee payment (but not the surcharge under 37 CFR 1.20(i)) and a copy of this notice. The inclusion of a copy of this notice will be treated as a representation that the delay in payment of the maintenance fee was due to the effects of Hurricane Katrina and as a request for sua sponte a waiver of the surcharge under 37 CFR 1.20(i).Patentees are reminded that a petition to accept a delayed maintenance fee payment under 37 CFR 1.378(c) must be filed within twenty-four months from the expiration date of the patent. See 35 U.S.C. 41(c). A petition to accept a delayed maintenance fee payment filed later than twenty-four months after the expiration date of the patent must be filed under 37 CFR 1.378(b) and include a showing that the delay in payment was unavoidable.
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Ch 15: New Rules For Interpretation Of Claim Terms In Infringements: (Sec. J). The Court of Appeals for the Federal Circuit--CAFC), which oversees the PTO, has been reworking and changing its rules for interpreting claims in patent infringement situations for many years. It announced its latest changes in Phillips v AWH Corp. et al., 2005 Jul 12, where all of the judges participated, although some filed a bitter dissent (“The court’s opinion today is akin to rearranging the deck chairs on the Titanic—the orchestra is playing as if nothing is amiss, but the ship is heading for Davy Jones’ locker.”). Here are the CAFC’s latest rules:1. If a claim recites a means which includes some hardware, e.g., “means comprising a baffle”, Sec. 112, par. 6 does not apply so the means clause is not restricted to the part described in the specification and its equivalents and should be interpreted more broadly.2. To interpret the meaning of a crucial term in a claim, use the following procedure:A. As a baseline, determine the meaning of the term to a person with ordinary skill in the art; other sources can be referred to for this.B. See if the context of the term in its claim and other claims sheds light on the term’s meaning. E.g., if the term is used broadly in an independent claim, such as “a baffle” and a dependent claim states that the baffle is inclined, this indicates that the baffle should not be interpreted as being inclined in the independent claim.C. Refer to the specification to interpret the term. If the specification defines the term, this is controlling.D. Look at the prosecution history; this can be useful but less so than the preceding factors.E. Lastly, refer to extrinsic evidence, such as dictionaries, treatises, and testimony of experts. Less reliance should be placed o extrinsic evidence than in the past. The limitations in the specification should generally not be imported into the claims. E.g., if the specification shows a baffle that is inclined and the claim simply recites a baffle, the baffle should not be limited to inclined baffles.G. If a claim is ambiguous, it should be construed in a manner that sustains its validity.One law firm (Bromberg and Sunstein, LLP, of Boston) has suggested that a well-drafted patent application should include in the specification a set of definitions of the crucial words in the claims. I strongly agree and add that the definitions should be made as broad as reasonable. Note that these rules to not apply to patent application prosecution: During prosecution, an examiner is entitled to construe claim terms in the broadest manner possible.
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Ch. 15: Change of Address: (Sec. T). On p. 15/22, change the phone and address of Freiburger, Thomas M., to 415-435-0240, 55 Main St., 2d Flr., Tiburon, CA 94920.
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Ch 16: Erroneous Terms In Lump Sum Calculation: On p. 16/14, col. 2, in lines 6 and 7 up from the bottom, the terms in the calculation are erroneous. Please change "0.5 x 19 x 150,000 x $0.05, or $35,625" to --1/2 x 20 years x $.50 unit price x 150,000 units x 5% rate, or $37,500--.
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Appendix 4: Reduced Filing Fee For Small-Entity Electronic Filers: The filing fee for filing electronically as a small entity is $425, instead of the $500 for filing by mail as a small entity.
Appendix 4: Copyright Registration Fee Increase: The filing fee for filing an application to register a copyright has increased to $45. (06Sep21)
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Appendix 5: New PTO Central Fax Number: As part of its move to its new quarters in Alexandria, VA, the PTO has changed its central fax number to 571-273-8300. For a list of all documents that the PTO accepts by fax, see the notice in the Official Gazette for 2005 July 12.
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Appendix 7--Form 16-3B--Recordation Form Cover sheet: The fax number at the bottom of this sheet should be changed to (571) 273-0140. However the easiest way to record an assignment is do it online: make a PDF or TIFF copy of the signed assignment with a scanner, go to http://epas.uspto.gov/, and fill out the recordation form online, attach the assignment, pay by credit card, and submit the forms for recordal.
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To listen to an interview with your author go to
http://www.acidplanet.com/artist.asp?podcasts=458636&T=4039
Then select "Inventors and Patents".
UPDATES TO ARRANGED BY DATE POSTED
(Updates to the 11th ed. are typed after the updates to the 12th.)
----------2006 Oct 1:----------
Ch. 13, Sec. E.2: Error In Withdrawn Claim Typing Instructions--p. 358, Col. 2, 4th line, change “and is not” to –but since it is still pending it must be--.
----------2006 Oct 1:----------
Ch. 10: PTO Radically Changes Petition To Make Special Program--p. 283: Note the following, which radically changes the Petition To Make Special program:
The Petition To Make Special (PTMS) program, described in Sec. P beginning on p 283, has been almost completely changed. The only parts left intact are Petitions To Make Special based on Health or Age; all other petitions must be made under a new Accelerated Examination Program (AEP).
If you want to make your application special based upon your health or age, Sec. P of Ch. 13 is still valid and you may file a petition using this section and Form 10-9.
If you want to make your application special based upon any other reason whatsoever, including those that are mentioned in Sec. P, or any other reason, you must use the new AEP. However the AEP is extremely difficult and very time-consuming to implement. To follow this program you must file a PTMS Under AEP (PTMSUAEP) at the time of filing your application and you must file the application electronically using EFS-Web. The PTMSUAEP is Form SB28, available on the EFS web site (www.USPTO.Gov/ebc, then File/EFS-Web Unregistered eFilers, then Electronic Filing, then efiling Forms). The PTO estimates that form SB28 will take 12 hours to complete!
You must first make a search, then prepare an Information Disclosure Statement citing the references in the search. you must also identify the limitations of the claims that are disclosed in the references, how the claims are patentable over the references, discuss the utility of the invention, list references that may be disqualified as references because they came from the same organization (see 35 USC 103(c)), state where each limitation of the claims finds support in the specification, detail the search that was made, including where it was made, and state the reason for accelerated examination.
The application may not have over three independent and 20 total claims and must claim one invention only. The fee for the PTMSUAEP is $130 and is in addition to the EFS-Web filing fee of $425.
In return, the PTO will endeavor to process your entire application to patent in less than 12 months.
For more information, see the Notice in the Official Gazette of 2006 July 18. The PTO has provided samples of Request For Expedited Examination at http://www.uspto.gov/web/patents/accelerated/
If you've already filed, it's too late to file a PTMSUAEP in your pending application, but you can circumvent this restriction by filing a continuation application and filing the PTMSUAEP in the continuation.
Warning:Unless absolutely necessary, I strongly advise you not to file a PTMSUAEP since it forces you to make very restrictive statements and admissions that could severely cripple any patent that you get if you ever need to use it in licensing or in court. (Ch. 10:Sec. P.)
----------2006 Nov 12:----------
Ch. 6: How To Use A Lawyer--p. 121:Add the following sidebar:
--How To Use A Lawyer
I have seen many instances where inventors have used a patent lawyer or agent (hereafter practitioner) to handle their patent application and have been very disappointed:they may be left bereft of any knowledge of the status of their application, feel gypped, and/or be left with an abandoned application without good cause, among other things. If you do use a practitioner to handle your patent work, below are some things to do to make sure these misfortunes don’t happen to you.
1. Before using a practitioner at any stage of the process, please read PIY or the appropriate parts; it can be invaluable to explain the procedures and law, to make the best use of the practitioner, and to save practitioner fees and the practitioner’s expensive time.
2. Make sure the practitioner sends you a copy of each and every document (letter or official paper) that they generate for you or receive on your behalf.
3. Mount every paper you receive from the practitioner in a file, keeping official papers, bills, and letters separate.
4. Make sure you understand everything the lawyer does or proposes to do for you and why the practitioner is taking this course of action. Almost every possible action is explained in PIY, but if not, ask the practitioner to explain it to you. You’re paying the practitioner and are entitled to know what and why the practitioner is doing or proposes to do anything.
5. Find out in advance the cost of every task the practitioner intends to perform for you and make sure the practitioner understands that you need to approve each and every fee in advance. Have the practitioner agree to obtain your advance approval if any fee will be exceeded; you don’t want any open billing. Also make sure the practitioner agrees to send you bills with disbursements itemized and kept separate from the practitioner’s fees and that the bills state the basis (time or fixed rate) for the practitioner’s fees.
6. If you can’t communicate with the practitioner, feel that the practitioner is not acting competently, or don’t understand what the practitioner is doing and are unable to obtain an adequate explanation, find another practitioner and dismiss the old practitioner. You are entitled to dismiss your practitioner at any time (with rare exceptions) and are entitled to obtain your file without charge, if you haven’t kept a copy of your papers as recommended in items 1 and 2 above. The file belongs to you.-- (Ch. 6, Sec. F)
----------2006 Nov 26:----------
Ch. 13: Error In Dates--p. 375: In line 7, delete “for”; lines 14 and 15, change “Aug 14” to –Oct 12--. (Ch. 13, Sec. Q.1.--)
----------2006 Nov 28:----------
Ch. 3: PTO Eliminates Disclosure Document Program--p. 54: Note the following: The PTO has eliminated the DDP as of 2007 Feb 1. I disagree strongly with this decision since I know that many inventors have used the DDP to record conception when they lacked witnesses and didn’t have enough time to write a PPA. (Ch. 3, Sec. H)
----------2006 Dec 4:----------
Ch. 8: Correction Of Some Solecisms--pp. 188 and 193: In line 16 (p. 188) change "a few 'saids' an 'wherebys,' but" to --a few 'saids' and 'wherebys,' but--. In line 11 (p. 193) change "be sure write it" to --be sure to write it--. (Ch 8, Sec. I.1.)
----------2007 Jun 19:----------
Ch. 4: Will A Contingent-Fee Litigator Take Your Case?--p. 84, after Factor 62 add:
--63. Will A Contingent-Fee Litigator Take Your Case? Before filing, consider whether, if any patent you get is infringed, is there likely to be enough sales of the infringing device or process by a financially responsible defendant-manufacturer to get a contingent fee litigator to represent you on a contingent-fee arrangement. If there aren’t enough sales, or if the infringers are fly-by-night, irresponsible operators, most contingent-fee litigators won’t take your infringement case, even if you have a strong patent which is clearly infringed. In other words, the law is far more accessible when substantial amounts are involved.-- (Ch. 4, Sec. D)
----------2007 Jun 19:----------
Ch. 15: Patent Term Calculator--p. 393:Insert --Patent Term Calculator:A law firm has provided a patent term calculator at http://ssjr.com/tools/toolshell.aspx?tl=1. Simply enter your patent’s Earliest Effective Filing Date (e.g., if your patent issued from a divisional application, enter the filing date of the parent (originally filed) application), the Filing Date of the Application that issued as the patent (this date will be the same as the Earliest Effective Filing Date if your patent did not have any parent cases), the patent’s Issue Date, and any Term Adjustment. The calculator will then calculate the term of your patent.-- (Ch. 15, Sec. F)
----------2007 Jun 19:----------
Ch. 10: Missing Digit In Mathematical Expression--p. 253:Col. 2, 11th line up, insert a “2” under the square root sign. (Ch 10, Sec. C)
----------2007 Jun 19:----------
Ch. 10: Drawing Rules Not Being Strictly Enforced--p. 259:Col. 2, at end of section add, --Although the PTO has not published anything official, current practice indicates that the PTO is not rigidly enforcing its drawing rules. As a result some patents are issuing with sloppy drawings. I recommend that you file well-executed drawings, however, since these will avoid making a negative impression on your examiner or on any judge who may have to rule on your patent.-- (Ch. 10, Sec. D)
----------2007 Jun 19:----------
Ch. 10: Error In Filling Of Form--p. 281: In the body of the form, the filled-in author’s name should be typed in all capital letters, viz., --PHILLIPS-- (Ch. 10, Sec. N)
----------2007 Jun 19:----------
Ch. 8: Don’t Say Preferred Embodiment--p. 177, Col. 2, Items j and k, change “Preferred Embodiment” to –First Embodiment (two occurrences)--. (Ch. 8, Sec. B)
----------2007 Jun 19: :----------
Ch. 8: Writing Clearly--p. 190:Col. 1, after l. 13 add, --Write clearly, not only so you can be understood, but also so that you will not be misunderstood.-- (Ch. 8, Sec. I.1.)
----------2007 Jun 19:----------
Ch. 15: Beware of Published Application Scams--p. 395, Col. 2, after end of Sec. G, add,--Recently I filed for a client a PCT application which the PTO published in due course. Shortly thereafter the client received in the mail an official-looking “bill” from an official sounding organization in Fla., listing the details of his PCT application and asking for $1629.30 for “Charges For Registration”. This is a complete scam. I complained about this to the Fla. Attorney General and found that they were already investigating this organization for other scams. You may get a similar “bill” if your regular patent application is published, so beware. Ask an attorney or your own state’s attorney general if you receive any similar “bill” that’s not from a source with which you’re familiar.-- (Ch. 15, Sec. G.)
----------2007 Jun 19:----------
Ch. 15: No More Automatic Injunctions--p. 407, Col. 1, after last line add, --In 2006, in eBay v. MercExchange, the US Supreme Court held that even if a court finds that a patent is valid and infringed, the patent owner is no longer automatically entitled to a court order enjoining against further infringement. They held that the trial court shouldn’t issue an injunction unless the patent owner shows a balance of equity in its favor, e.g., the patent owner is selling products employing the invention and would be damaged by letting the defendant continue to infringe. This in effect can force a patentee into granting a compulsory license of the patent.-- (Ch. 15, Sec. M)
----------2007 Jun 19:----------
Ch. 5: Easier To Invalidate Or Reject On Multiple References--p. 108, Col. 2, in Factor 14, and p. 345, Fig 13D, in Item 29 add:
--In 2007, in KSR v. Teleflex, the US Supreme Court made it easier for the PTO or the courts to reject claims or hold patents invalid on a combination of references. Prior to this, the cases held that an invention should not be held obvious over several prior-art references unless there is a suggestion, motivation or teaching that the references can or should be combined. This case held that there must be some apparent reason in the prior art to justify combining the references. E.g., the existence of a problem can make it obvious to try various solutions; the prior art doesn’t have to be directed to the precise problem, so long as the references still perform their same functions. If you argue that the combination was not suggested by the prior art, argue (if applicable) that the problem solved by your invention is different and the references perform new functions in your combination.-- (Ch. 5, Sec. F.5 and Ch. 13, Sec. D)
----------2007 Jun 27:----------
Ch. 5: Published Patent Applications Are Prior Art As of Their Filing Date--p. 99, Col. 2, line 6 up, after “and foreign),” insert:--published patent applications (effective as of their filing date), (Ch. 5, Sec. E.d.i.)
----------2007 Jun 27:----------
Ch. 13: Patents and Published Patent Applications Are Prior Art As of Their Filing Date--p. 335, Col. 1, after line 7, insert:
--31. Patents and Published Patent Applications Are Prior Art As of Their Filing Date As Well As Their Publication Date
Remember (Chapter 5) that patents and published patent applications (PubPAs), unlike other publications, are effective as of their filing date, in addition to their publication date. So if the examiner rejects your claims on a patent or PubPA, you may have to consider both dates when formulating your response. If the patent or PubPA was published over a year before your filing date, it’s a statutory bar (Sec. 102(b)) so you can’t swear behind it (see Sec. D.3. below) and thus only the publication date is relevant. If the patent or PubPA was published less than a year before your filing date, it’s prior art as of its publication date (Sec. 102a) and as of its filing date (Sec. 102(e)). You must swear behind the earlier (filing) date by proving an earlier date of invention—see Sec. D.3. below and Ch. 5, Sec. E.1.b.-- (Ch. 13, Sec. E.d.i.)
----------2007 Jul 9:----------
Ch. 10: PTO Site Doesn’t Accept Documents Created With Adobe Reader 8.0--P. 290:If you created any PDF form with Adobe 8.0 (such as the IDS--Form SB08a) and you try to file it via EFS-Web, the EFS may reject it, stating you’re using the wrong version of Adobe Reader. You have to use Adobe Reader 7.0.9. Here’s how:Remove Adobe 8.0 from your computer and then go to www.Adobe.com. Click “Get Adobe Reader”, then “Choose a different version”, then fill in the blanks to describe your computer, and then DL and install Adobe 7.0.9. If you’ve already created a document with Adobe 8.0, open it with Adobe 7.0.9 and re-save it with 7.0.9 in order to convert it to Adobe 7.0.9. Then you will be able to upload it successfully. The PTO says they are working to make their system compatible with PDFs created with 8.0. (If you do replace your Adobe with the earlier version, be sure to change any references [e.g., in your scanner] from Adobe 8.0 to 7.0.9.) (Ch. 10, Sec. R).
----------2007 Sep 7:----------
Ch. 6: Additional Free Search Sites—p. 156, Col. 1, after line 7, add the following additional free search sites:
· Google Patents (www.google.com/patents) an excellent resource that includes US patents back to the beginning. I recommend you always make a search on this site.
· Patent Monkey (www.PatentMonkey.com) is another good search site that goes back to 1976 but includes the maintenance-fee status (expired or in-force) and claims, abstract or description on the front page.
· Clearly Understood:http://www.clearlyunderstood.com/ is a comprehensive patent services site that requires registration but also provides an additional searching capability. (Ch. 6, Sec. L, Part 1)
----------2007 Sep 7:----------
Ch. 6: Science Search Engine Available—p. 163, in col. 2, after Sec. O, insert the following Section P and change existing Sec. P to Sec. Q:
P. Science Search Engine Available
The Internet has a science-specific search engine, www.Scirus.com, for searching more than 415 million science-related pages. According to the site, Scirus helps you quickly locate scientific information on the Web by filtering out non-science sites, locating peer-reviewed articles such as PDF and PostScript files, which other search engines may miss, and searching a more comprehensive combination of web information, preprint servers, digital archives, repositories and patent and journal databases. Scirus goes deeper than the first two levels of a Web site, thereby revealing much more relevant information. (Ch. 6, Sec. O)
----------2007 Sep 7:----------
Ch. 8: Copyright Notice In Specification—p. 196, in col. 2, above the “Trademarks” sidebar, insert –If you want to put a copyright or mask work notice in the specification or drawings to provide notice that your program listing, mask work, or other written material in the specification is covered by copyright, you may do so since Rule 71(d) (37 CFR 1.71(d)) permits this. Rule 71(e) states that the notice shall be the first paragraph in the specification and the form of the notice shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever. (Ch 8, Sec. I.2.k)
----------2007 Sep 7:----------
Ch. 10: You Can Save The Fillable PDF Declaration Form—p. 290: If you file a patent application via EFS-Web you must include a Data Sheet (Form SB14). For the patent application declaration, you may use a simple Declaration Form:PTO/SB/01A. (If you file a paper application by mail without a Data Sheet you must use the longer Declaration Form:PTO/SB/01.) These forms are available on the PTO’s web site and can be filled in online. However these forms state, “You cannot save data typed into this form. Please print your completed form if you would like a copy for your records.” Thus to obtain a PDF copy of a completed Declaration Form, it was necessary to fill it online, print it, and scan it to PDF (or print the blank form, fill it by hand or with a typewriter, and then scan it to PDF). However there is a way to save the filled-in Declaration Form without printing and scanning it. First install the free file converter CutePDF Writer onto your computer. Then after you fill in the Declaration Form online, open the printer window and select in the Name window CutePDF Writer. Then click OK and select a suitable Save location, such as your Desktop, and you’ll have a PDF file of the Declaration form. (Ch. 10, Sec. R)
----------2007 Sep 7:----------
Fee Schedule Correction--Appendix 4: Do not use the existing Fee Schedule. Instead note the following and use the schedule below until 2007 Sep 30:
The PTO stated in the summer of 2006, as the 12th ed. went to press, that the usual annual fee increase to cover inflation would likely occur as usual on 2006 Oct 1. Accordingly I put the proposed new fees in the 12th ed. with a warning that you should check the PTO’s site or this site first. The PTO announced about 2006 Sep 30 (see www.USPTO.Gov) that, due to anticipated action by Congress, the current fees would continue beyond Oct 1. Accordingly the fees in PIY, 12th ed. are currently slightly too high. The correct fees are below and in PIY11, on the PTO’s site under Patents/Fees, and are on the ESF-Web Fee Payment pages. ($$$/$$$ = Large Entity/Small Entity)
Filing Fees
Disclosure Document Filing 10
Utility Patent Paper Filing 1000/500
Utility Patent Electronic Filing 1000/425
Design Patent Filing 430/215
Plant Patent Filing 660/330
Provisional Patent Application Filing 200/100
Provisional Patent Application Late Filing of Fee or Cover Sheet 50/25
Provisional Patent Application: Correct Inventors or Convert RPA to PPA 50
Fee For Each Independent Claim Over Three 200/100
Fee For Each Claim Over Twenty (Independent or Dependent) 50/25
Surcharge, Multiple Dependent Claims 370/185
Petitions To Commissioner
All petitions except as noted below 130
Expedited Examination of Design Application (Rocket Docket) 900
Petitions To Revive Abandoned Application
Unavoidable Delay 500/250
Unintentional Delay 1500/750
Extensions To Reply To Office Actions
First Month 120/60
Second Month 450/225
Third Month 1020/510
Fourth Month 1590/795
Fifth Month 2160/1080
Appeal To Board Of Appeals
Filing Notice Of Appeal or Brief 500/250
Oral Hearing 1000/500
Application Issue Fees
Utility Patent 1400/700
Utility Patent Publication Fee 300
Prior-Art Citation Fee (against published application) 180
Design Patent 800/400
Plant Patent 1100/550
Certificate To Correct Patent (Applicant’s Mistake) 100
Miscellaneous Fees
Reexamination Fee, Ex Parte 2520
Reexamination Fee, Inter Parties 8800
Late IDS Fee 180
Recording Assignment, per application 40
Surcharge, Bounced Check 50
Utility Patent Maintenance Fees
3.0-3.5 years 900/450
7.0-7.5 years 2300/1150
11.0-11.5 years 3800/1900
Late Charge (in six-month grace period) 130/65
Petition To Revive After Patent Expires (Unintentional Delay) 1640
Petition To Revive After Patent Expires (Unavoidable Delay) 700
Copy Fees
Certified copy patent application as filed 25
Printed Copy of Patent 3
Copy plant patent in color 15
Certified copy of file and contents of patent file 200
Certified copy of patent assignment record 25
Disclaimer of claims or terminal part of patent 130/65
Dedication of Entire Term or Terminal Part of Patent N/C
Trademark Fees
Filing Application For Registration On Paper 375
Filing Application For Registration On-Line 325
New Fees Effective 2007 Sep 30: The Official Gazette-Patents of 2007 Aug 28 announced that new and slightly higher PTO fees would be effective 2007 Sep 30. However the PTO has not yet made the exact amounts of these fees certain because of pending legislation. The PTO’s announcement listed two alternative sets of fees; the specific set that will be adopted depends upon whether the legislation is enacted before the effective date. Rather than list both sets of fees now, which would be confusing, I will post the new fees when they are finalized. You should pay the above fees until Sep 30. If you have to pay any fee after Sep 30, and I have not posted the new fees yet, you should check the PTO’s site prior to paying any fee. The PTO posts all current fees on its site www.USPTO.Gov:go to Patents, then Tutorial—Fees, then Current Fee Schedule. Alternatively if you file online you can obtain the current filing fees from the Fee Payment Page in the online filing process. Remember that although a statute requires the PTO to list the Basic (Filing), Search, and Examination fees as separate components, you must always pay the sum of these three components in one lump sum when you file.
----------2007 Sep 7:----------
Ch. 14: New Continuation Rules Limit Number of Applications In The Chain—p. 380, in col. 1, before Sec. B, insert the following:
New Continuing Application Rules Effective 2007 Nov 1:
In an effort to reduce the number of pending applications, the PTO has issued the following new rules pertaining to continuation, divisional, and CIP applications. I and many other attorneys and inventors don’t think these new rules will have the desired effect, the new rules have been challenged in court, and they will make patent application practice far more complicated, but we will have to live with them until otherwise notified. The actual notice and the new rules take 129 pages in the Federal Register of 2007 Aug 21!
1. An applicant may file only two continuation applications and one RCE, unless the applicant can show that the content of further filings could not have been previously submitted. This applies to each claim family. Rule 78
2. An applicant may file a divisional application only if the prior-filed application is subject to a requirement for restriction and the divisional application claims only a non-elected invention(s) that has not been examined. Divisional applications can be filed in parallel or series as long as one application from the parent application family is pending. An applicant may not file a divisional application if they traversed the requirement for restriction. Rules 142, 145
3. An applicant who files a continuation-in-part application must identify those claims that are supported by the priority application. Rules 142, 145. (Ch. 14, Sec. A)
----------2007 Sep 7:----------
Ch 9: Limitations On Number Of Claims—p. 221, col. 2, before Sec. C insert:
Limitations On Number Of Claims: An applicant may not file more than five independent and 25 total claims unless they file an Examination Support Document (ESD). An applicant may not file more than 15 independent and 75 total claims in any application family (parent, continuation, etc.—see Ch. 14), unless they file an ESD. Rule 265. This rule applies to all applications that have not received a first action on the merits by 2007 Nov 1. An ESD must include a search statement identifying the search areas and terms used, a list of relevant references, identification of the claims limitations of each reference, an explanation of the patentability of each independent claim, including why it would not be obvious to combine any relevant references, a showing of support in the specification (and priority document if relevant) for the limitation of each independent claim. Rule 75. (Ch 10, Sec. B.2.)
Ch 13: Limitations On Number Of Claims—p. 335, col. 1, before Sec. C insert:
31. Limitations On Number Of Claims
Bear in mind the rules discussed in Ch 10, Sec. B.2 regarding the number of claims you may file in any application. You may not amend your application to cause it to have more than five independent and 25 total claims unless you file an Examination Support Document (ESD). Rule 75. Also you may not file more than 15 independent and 75 total claims in any application family (parent, continuation, etc.—see Ch. 14), unless you file an ESD. Rule 265. This rule applies to all applications that have not received a first action on the merits by 2007 Nov 1. An ESD must include a search statement identifying the search areas and terms used, a list of relevant references, identification of the claims limitations of each reference, an explanation of the patentability of each independent claim, including why it would not be obvious to combine any relevant references, a showing of support in the specification (and priority document if relevant) for the limitation of each independent claim. (Ch 13, Sec. A)
Ch 13: Requirement For Restriction—p. 373, col. 2, add to end of Sec. M:
If your application contains claims to more than one invention, you may file a Suggested Requirement For Restriction and an election of the claims that you wish to be examined. Rule 142. (Ch. 13, Sec. M).
Ch 14: Presumption Of Similar Inventions—p. 380, col. 1, before Sec. B add:
Presumption Of Similar Inventions: If you file any continuing applications that have the same owner and have a claimed filing or priority date within two months of the claimed filing or priority date of a previous application and name at least one inventor in common with the application, you must identify them. The PTO will presume that the present application and the other application(s) or patent(s) contain at least one patentably indistinct claim if the other commonly owned application or patent also has: substantial overlapping disclosure with the application, and the same filing or priority date as the claimed filing or priority date of the other application. This presumption may draw a double patenting rejection but may be rebutted. Rule 78. (Ch. 14, Sec. A).
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Updates To Patent It Yourself (11th ed.—2005 Apr.) Arranged By Chapter
Ch. 1: SCI3 No Longer Searches: On p. 1/13, col. 2, delete the last full paragraph (beginning with ". Sunnyvale Center ") and delete the last paragraph (which continues to p. 1/14) as SCI3 no longer does any searches.
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Ch. 3: Invention disclosure (Fig 3C): On p. 3/13 (Fig 3c), change paragraph numbers “5”, “6”, and “7” to –6–, –7–, and –8– and insert a new paragraph after paragraph 4. as follows: –5. Operation: The user operates the can opener in the same way as any squeeze-and-turn opener for any size can. –---------------------------------------------------------------------
Ch. 3: File Disclosure Documents In PTO (Sec. H): On p. 3/15, col. 2, delete 1st paragraph. (Some libraries have terminated the DD filing service and it's best to file Disclosure Documents directly in the PTO.)
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Ch. 6: PTO Has Eliminated Partnership PTDLs (p. 6/33): As the PTO eliminated Partnership PTDLs as of 2006 Jun 1, please cancel the paragraph beginning with "Partnership PTDLs . . ." on p. 6/33, col. 2.
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Ch. 8: Program Listings Must Be In ASCII Format; Microfiche No Longer Acceptable (Secs. G and I.2.k.): Ch. 8, Sec. G. states that a computer program listing can be submitted in “machine-readable form (object code)”, but PTO Rule 52(e) (37 CFR 1.52(e)), discussed in Sec.I.2.k, states that the listing must be submitted in ASCII format. The PTO rule prevails, so all listings must be in ASCII format. Therefore unless you can somehow supply the object code in ASCII, you will have to submit the source code. Also Rule 52(e) no longer permits submission of microfiche, so all program listings that are longer than 300 lines must now be submitted on duplicate CDs that are in ASCII and comply with the other provisions of Rule 52(e).
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Chs. 8 and 13: What You Say In Application And Amendments Can Be Used Against You (Ch. 8, Sec. I.2.g.; Ch. 13, Sec. B.11.): Some recent appellate decisions have relied on wording in the specification or amendments to limit the scope of the claims. E.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) and Vehicular Technologies Corp. v. Tital Wheel International, Inc., 212 F.3d 1377, 1380 (Fed. Cir. 2000) held that an object of the invention that recited a specific arrangement limited the scope of the claims to that arrangement so as to prevent a finding of infringement. C. R. Bard, Inc. and Davol, Inc. v. United States Surgical Corp., #04-1135 (2004 Oct 29) held that even though some claims were limited to a pleated surface and some were not, since the Summary of the Invention in the specification and an attorney stated in an amendment that a surface was pleated, all claims would be limited to a pleated surface and therefore were not infringed. To avoid these problems I recommend the following changes:1. Omit the Objects and Advantages section entirely (many patent attorneys are now doing this) or don’t name it “Objects and Advantages”. Instead just call the section “Advantages”.2. Don’t refer to “the invention” or call any embodiment “preferred”; instead simply refer to “this embodiment” or a “first embodiment”.3. Include a disclaimer as part of the Advantages. One way to do this is as follows: Accordingly one or more embodiments of the present invention may have one or more of the following advantages: . . .”.4. Write the Advantages carefully so that they don't recite any specific details or arrangements that could be regarded as limiting. E.g., don’t state "It is an advantage to provide a console between the seats”. Instead state, “It is an advantage to provide a more accessible console.”. Be sure that your invention and any possible variation will meet every advantage. Also use weasel words so that no Advantage will be too broad or absolute. E.g., don’t state, “One advantage is to avoid the problem of . . ." Rather state “One advantage is to reduce the problem of . . .".5. Keep the Summary and the Abstract general; don’t include any details of the invention that you would not want to be used to limit the invention. I advise simply paraphrasing your broadest claim for the Summary.5. If you eliminate the Advantages section entirely, you can indicate the advantages by noting the problem solved by the invention in the Background--Prior Art section and stating the advantages without using this word in the detailed description section. E.g., simply state how it works better.6. In the Remarks part of any Amendment, never make any argument for the patentability of any claim that refers to any features that are not in that claim. E.g., if you’re arguing the patentability of a claim that simply recites a surface, don’t state that the cited prior-art patent to Smith doesn’t show a pleated surface. If you’re arguing the patentability of a narrower claim that recites a pleated surface, be sure to first argue the patentability of the broader claim without mentioning the pleated surface and then state that the narrower claim is additionally or independently patentable because it recites pleats, which Smith doesn’t show.
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Ch. 9: Sample Claim Has An Inconsistent Antecedent: (Sec. G.1). On p. 9/12, col. 2, the last "said" clause in the sample claim has an inconsistent antecedent. Thus in the last two lines of the claim, ". . . said rigid member . . ." should instead read --. . . said sheet of rigid material . . .--.
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Ch. 9: Published Patent Application Cited Incorrectly: (Sec. K): On p. 9/27, col. 1, 4th par., last line, “U.S. Pat. No.” should read –U.S. Pub. Pat. Appn. No.--.
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Ch. 9: Each Independent Claim Must Stand By Itself: (Sec. K). Some inventor-readers of PIY have tried to recite, in a second or later independent claim, a component of the invention in a manner that requires antecedent support, even though the antecedent support exists only in a previous claim and not in the current claim. E.g., some inventors have tried to recite, in a second independent claim, “a second lever” even though the first lever has been recited only in a previous claim. Others have tried to recite “said wheel” in a second independent claim, even though a wheel has been recited only in a previous claim. This type of recitation is not permitted. Each independent claim must stand completely by itself; i.e., it may not refer to, incorporate, or be based in any way on any previous claim.
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Ch. 10: Mensuration Error (Fig 10B): A reader from Detroit kindly pointed out a few errors in Fig 10B on p. 10/9:In the U.S. Letter Size diagram, the horizontal dimension "176mm (6 15/16")" should be --175 mm (6 7/8")--. Under the heading "U.S. Letter Size", ". . . or 216 mm x 269 mm" should read –. . . 216 mm x 279 mm–.In the A4 Size diagram, the horizontal dimension "170 mm (6 5/8")" should be –170 mm (6 11/16")–.
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Ch. 10: Declaration Form For Multiple Inventors: (Sec. H, p. 10/17-19 and Form 10-1 in Apx. 7): The Declaration form for for a patent application provided in the Appendix (Form 10-1) and as completed in Ch. 10 (Figs 10IA and 10IB) has spaces for multiple inventors. However the Declaration form on the PTO's web site (Form PTO/SB/01) now has spaces for only one inventor. If your application has more than one inventor you may still use Form 10-1 in PIY, or if you want to use the forms on the PTO's site, the additional inventors can be listed and should sign on form PTO/SB/02.
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Ch 10: PTO Implements EFS-Web Application Filing System (Sec. I, p. 10/20) The PTO has implemented an Electronic Filing System using the Worldwide Web or Internet (EFS-Web) that enables patent applications, amendments, etc. to be filed over the Internet. It replaces the former EFS, which was difficult to learn and use. The EFS-Web is simple to use and learn and represents a considerable improvement. However it still requires some learning, the conversion of all documents to the Portable Data Format (PDF), and a good chunk of time, so if you’re filing just one application, it will still be easier and faster for you to mail a paper copy of the application to the PTO. However the EFS-Web is a very sexy, high-tech, and gratifying experience, which also has the following practical advantages: (1)you can file an application anytime and from anywhere, (2) you can obtain instant confirmation of receipt of documents by the PTO, (3) you can send an application to the PTO without having to go to the Post Office to get an Express Mail receipt or having to wait for a postcard receipt, (4) you can file an application without having to prepare an application transmittal, a fee transmittal, receipt postcard, or check or Credit Card Payment Form (CCPF), and (5) you get a $75 reduction in the filing fee.If you’re ready to file and are game for a new adventure in the world of EFS-Web, do the following:1. Become A Registered eFiler If Time Permits: If you can wait several weeks to file, I recommend you become a registered eFiler. You’ll have to jump through several hoops and deal with red tape, including filling out a form to obtain a customer number, sending a notarized certificate to the PTO, obtaining acess codes, and calling the PTO to confirm, but as a registered eFiler you’ll be able to track your application’s progress and file additonal documents, such as amendments, online. To register go to www.uspto.gov/ebc/index.html, click on Register Now, and follow the detailed instructions. If you can’t wait several weeks, you can use EFS-Web to file an application as an unregistered eFiler and register later.2. Prepare The Application As Usual: Before you go online, prepare the entire application as instructed in Chapters 8 to 10. Include the drawings, specification, claims, abstract, and declaration. Omit the Application Transmittal form, Fee Transmittal form, Receipt Postcard, Non-Publication Request (NPR), and check or CCPF since these are part of the Data Sheet (see next par.) or are filled out online. Sign and date the Declaration as usual. (If you’re filing a PPA include the drawings and specification (claims and abstract are optional) and fill out a PPA Cover Letter or Sheet (Form 3-5 in Appendix or Form PTO/SB/16.)
3. Convert Application To PDF: Convert all documents of the application (Drawings, Specification, including Claims and Abstract, and signed Declaration) to PDF documents. There are free software programs such as CutePDF that can convert word processing documents and drawings to the PDF format. To convert signed documents, such as a signed Declaration (PTO/SB/01), use a scanner to scan the documents directly to PDF files. I use a Canon LiDE scanner, but others work as well. It’s easiest if you convert each part of the application to a separate one-or-more-page PDF file and give it a descriptive name, such as Dwgs.pdf, Spec.pdf, Dec.pdf, and NPR.pdf. When you scan to PDF, set the scanner to Black and White (no Greyscale or Color) and 300 or 400 dpi for good clarity. Put all of the PDF application files into a separate PDF Application Holding Folder with a suitable name (e.g., Deraillieur Appn PDFs) to keep them together and have easy access to them.
4. PDF Data Sheet: Bring up a fillable application data sheet form by going to USPTO.gov/ebc, then click EFS-Web Unrgistered eFilers, then Electronic Filing, then eFiling Forms, or go directly to www.uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf. Open the SB14 form, check Highlight required fields, and fill them out. The program will automatically fill in the header blanks. Check Request Not To Publish (recommended) if you don’t want to have the application published, but remember to file a revocation of your Non-Publication Request if you foreign file later. Then save the completed form using a suitable name, such as Data.pdf, in the PDF Application Holding Folder with your other PDF application forms.
5. Sign-On: Go to www.uspto.gov/ebc/index.html. If you haven’t registered as an eFiler, click on EFS-Web Unregistered eFilers and fill in your name and email and the type of application (Design, Utility, Provisional, or US National Stage (371)) and click Continue. If you have registered, click on EFS-Web Registered eFilers. Then fill in your Digital Certificate and Password, which you already have. You can recover the Digital Certificate by browsing to Program Files/USPTO in your computer and opening the file with your name and an .epf suffix, e.g., John Smith.epf. Click Authenticate and then certify your identity, select New application, and the type of application and click Continue. If you get stuck at any time, call the PTO’s Electronic Business Center at 866-217-9197.6. Application Data: On the Application Data page fill in the title of the invention, a docket number for the application of your choosing (optional), and your name and Customer Number or address. It’s best to copy this data from your Data Sheet so that everything will be consistent. If you’re registered, click New application. (Even if you’re not registered you can obtain a Customer Number, which will take a few days but will save you from having to type your address each time.). Click Continue.7. Attach PDF Files: In the Attach Documents page click the Browse button and find the PDF Application Holding Folder which contains the PDF files of your application. Select one of your PDF application files, e.g., the Data file, click open, and you should see it in the Files To Be Submitted box adjacent the Browse button. Then open the Category pull-down menu adjacent the middle window and select Application Part. Then open the rightmost pull-down menu and select Application Data Sheet. (Make sure the No button opposite Does your PDF file contain multiple documents? is checked since it’s more difficult to work when everything is in one PDF document.) Then click the Add File button and another row of three windows will open. Repeat the above steps for each of your other PDF application files (e.g., Dwgs.pdf, Spec.pdf, Dec.pdf, and NPR.pdf), selecting the Document Description in the third window for each. (If you’re filing a PPA, the PPA Cover Letter or Sheet goes under Transmittal Letter in the third column.) When you’ve attached all of the PDF files in your PDF Application Holding Folder, click the Upload & Validate button at the bottom.
8. Review Documents: After a few minutes, you’ll eventually get a Review Documents page, which should show all of the documents you’ve attached. Make sure all parts of your application are listed and there are no errors. If any errors are indicated, you’ll have to go back and fix them. Sometimes the PTO’s server will reject one or more PDF documents because it uses non-embedded fonts or for another reason, e.g., it has been scanned to grey format. You will usuallly be able to fix an unacceptable PDF file by simply opening it and using the CutePDF program to convert it to another PDF file: this will eliminate the non-embedded fonts and the greyscale. Once everything is OK click Continue.
9. Calculate Fees: On the Calculate Fees page, select your entity size, which will usually be Small Entity, click the Filing, Search, and Exam boxes (and any other applicable boxes) and the Calculate button. Your subtotal and total filing fee will be entered in the applicable boxes. Note that the total basic filing fee for filing electronically is $425, $75 less than the $500 basic filing fee for filing by mail. Click Continue.10. Submit Application: This page will list all of your PDF files, a Fee-Info.pdf file, and the filing fee. If everything is OK, click the Submit button at the bottom to bring up a Congratulations! page with an assigned Application Number, Confirmation Number, and Total Fees due. Click the YES! I want to pay now button at the bottom.11. Review fees and select payment method: Unless you have a PTO Deposit Account or are set up for EFT, select Charge Credit Card, then the Start online payment process to bring up the payment page. Fill out the blanks and click the Confirm button at the bottom.12. Acknowledgment Receipt: If everything is OK you’ll get an Acknowledgment Receipt, which is analogous to the receipt postcard which was used for mailed filings. The Acknowledgment Receipt will list the Application (Serial) Number, the Confirmation Number, the application data and parts that you’ve filed. Congratulations! You’ve bypassed the Post Office, filed an application electronically, and have gotten an instant filing acknowledgment. Select Print This Page to print the page for your records. In due course you’ll get an official filing receipt by mail, as usual.13. IDS: As you know, you must generally file an IDS (Information Disclosure Statement) within three months after filing if you know of any relevant prior art. If you're a registered eFiler you can file an IDS online. Bring up a fillable IDS form by going to USPTO.gov/ebc, then click EFS-Web Unrgistered eFilers, then Electronic Filing, then eFiling Forms, or go directly to uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf. Open the SB08a form, check Highlight required fields, and fill them out. The program will automatically fill in the header blanks. Then save the completed form using a suitable name, such as IDS.pdf, and file it online in a similar manner as you filed the PDFs of the application. If you're unregistered you'll have to fax or mail the IDS. Remember that you don't have to accompany the IDS with copies of any US patents or published patent applications, but you do have to accompany it with copies of any foreign patents (with an explanation of relevance) and copies of any non-patent prior art. 2006Apr1.
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Ch. 10: Error In Filled-Out Form 10-1: (p. 10/18--Fig 10IA) In filled-out Form 10-3 (Fig 10IA on p. 10/18) the box “is attached hereto” should be checked instead of the box “was filed on …”.
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Ch. 10: Another Reason To File An NPR: (Sec I.1., p. 10/22) As stated on. p. 10/22 under “Box 16” in col. 1, if you file an NPR (Non-Publication Request) at the time of filing the application, your application will not be published before issuance, so you can avoid paying the stiff publication fee at the time of allowance. Another reason for filing an NPR is that when your application is published, your entire prosecution history will be open to the public on the PTO’s Public PAIR site. You may find this very undesirable since it will give your competitors and potential infringers a peek at your prosecution strategy and arguments before your patent issues.
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Ch. 10: Error In Filled-Out Form 10-3: (p. 10/23--Fig 10K) In filled-out Form 10-3 (Fig 10K on p. 10/23) some of the amounts in Item 2 (“EXCESS CLAIMS FEES”) are erroneous:• Under “Total Claims” the “Fee ($)” reads “$9” but should read —$25— and the “Fee Paid ($)” reads “$36” but should read –$100–.•• Under “Indep. Claims” the “Fee ($)”reads “$42” but should read –$100– and the “Fee Paid ($)” reads “$42” but should read –$100–.---------------------------------------------------------------------
Ch. 10: PTO Radically Changes Petition To Make Special Program: (Sec. P, p. 10/36): The Petition To Make Special (PTMS) program, described in Sec. P beginning on p. 10/36, has been almost completely changed. The only parts left intact are Petitions To Make Special based on Health or Age; all other petitions must be made under a new Accelerated Examination Program (AEP). If you want to make your application special based upon your health or age, Sec. P of Ch. 13 is still valid and you may file a petition using this section and Form 10-9. If you want to make your application special based upon any other reason whatsoever, inluding those that are mentioned in Sec. P, or any other reason, you must use the new AEP. However the AEP is extremely difficult and very time-consuming to implement. To follow this program you must file a PTMS Under AEP (PTMSUAEP) at the time of filing your application and you must file the application electronically using EFS-Web. The PTMSUAEP is Form SB28, available on the EFS web site (www.USPTO.Gov/ebc, then File/EFS-Web Unregistered eFilers, then Electronic Filing, then efiling Forms). The PTO estimates that it will tkae you 12 hours to complete the form! You must make a search, prepare an Information Disclosure Statement citing the references in the search and identifying the limitations of the claims that are disclosed in the references, state how the claims are patentable over the references, discuss the utility of the invention, list references that may be disqualified as references because they came from the same organization (see 35 USC 103(c)), state where each limitation of the claims finds support in the specification, detail the search that was made, including where it was made, and state the reason for accelerated examination. The application may not have over three independent and 20 total claims and must claim one invention only. The fee for the PTMSUAEP is $130 and is in addition to the EFS-Web filing fee of $425. In return, the PTO will endeavor to process your entire application to patent in less than 12 months. For more information, see the Notice in the Official Gazette of 2006 July 18. A Warning: Unless absolutely necessary, I strongly advise you not to file a PTMSUAEP since it forces you to make very restrictive statements and admissions that could severly cripple any patent that you get if you ever need to use it in licensing or in court. (2006Sep8)
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Ch. 11: Contingent-Fee Developers (Sec. B.1., p. 11/4): In addition to America Invents.com and BigIdeaGroup.net, another contingent-fee marketer is InventorsPublishing.com.
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Ch. 11: Toy Submissions (Sec. D, p. 11/8): If your invention is a toy, the toy retailer F.A.O. Schwartz has "toy auditions" in N.Y.C. To find out where and when the next audition will be held, go to http://www.fao.com/ and search for "Toy Audition". 2006 Apr 18. Also the Disney Store has been bought by Children’s Place and they are looking for educational, interactive, Disney or Pixar character, and innovative toys. Contact Moshe Dabah, Disney Stores New Product Development; Email- Mdabah@childrensplace.com. 2006 Aug 11.
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Ch. 13: Error In Claim Amendment Instructions (Sec. E.2., p. 13/29): On p. 13/39, col. 2, penultimate line, change “and is not” to –but since it is still pending it must be--. (2006Sep7)
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Ch. 13:, Supplemental Amendments (Sec. B, p. 13/14): Add a new section in col. 2 of p. 13/14 as follows:28. Supplemental RepliesAfter you file a " regular" amendment (see Secs. D to H below), you may see some errors or room for improvement and thus want to file a Supplemental Amendment or Reply. Under a new rule (37 C.F.R. 1.111 (a)(2)), you don't have the right to file a Supplemental Reply unless it is clearly limited to (a) canceling claims, (b) adopting any examiner's suggestions, (c) placing the application in condition for allowance, (d) replying to an Office requirement made after the first reply was filed, (e) correcting informalities, such a typographical errors, or (f) simplifying issues for appeal. So it behooves you to do your first reply (amendment) very carefully and to make it as complete as possible. I find that the best way to avoid the need for a Supplemental Reply is to do the first amendment well in advance of the due date, wait a day or two, and then review it again and polish and correct it as necessary.
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Ch. 13: Error In Section Reference (Sec. F, p. 13/41): On p. 13/41, col. 2, in the paragraph headed "Rule 8", last line, change "A27" to --B27--.
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Ch. 13: Replacement Drawings May Be Filed By Fax After Allowance (Sec. I): After a Notice of Allowance is sent, the PTO will now accept replacement drawings by fax. They state that even though the quality of the drawings is degraded by faxing, they will usually accept faxed drawings for publication. If you are paying the issue fee by credit card (recommended) or through a PTO deposit account, you can fax the Issue Fee Transmittal, Credit Card Payment form, and any needed replacement drawings to 703-746-4000. Official Gazette, 12 July 2005.
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Ch. 13: Pre-Appeal Conference. (Sec. J.4.): The PTO has instituted a new optional procedure whereby an applicant whose application has been finally rejected and who has decided to appeal can have a panel of examiners review the legal and factual bases for the rejections as part of the appeal process and before filing a brief. This procedure will avoid the need for filing the appeal brief if the panel agrees with you. The entire procedure is explained in a notice in the Official Gazette for 12 July 2005, but here is a brief summary. If you have not been able to obtain allowance from the examiner, and you have decided to appeal, here’s how to take advantage of the new pre-appeal review process: You must file a regular Notice of Appeal (Form PTO/SB/31) with the appropriate fee, which is currently $250. You must accompany the Notice of Appeal with a “Pre-Appeal Brief Request For Review” (PTO/SB/33--no extra fee), plus a “succinct, concise, and focused set of arguments” (no more than five pages at 1.5 line spacing) in support of your position. The three documents may be mailed, but the PTO prefers that you fax them to its new, central fax number, 571-273-8300. The PTO prefers that you use this process only where there are clear errors in fact or law and not where the issues are in grey areas, such as interpretations of the prior art or claim scope. A panel of three examiners, including a supervisor and the examiner of record, will review your arguments and issue a decision that either (1) continues the appeal because they agree with the examiner of record, (2) reopen prosecution and propose changes that will place the application in condition for allowance or advise that a further communication from the examiner will follow, (3) allow the application, or (4) dismiss your request because is fails to comply with the submission requirements. If the panel’s decision is alternative (1) or alternative (4), you must file the usual brief and fee within one month from the decision or within two months from the date you filed the Notice of appeal, whichever is longer.
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Ch. 15: Correction Of Instruction For Filling Out Certificate Of Correction: (Sec. C). On p. 15/4, under “Step 2:”, change “as if you were making an amendment (see Chapter 13) to the actual printed patent;” to –to the actual printed patent by sandwiching matter to be deleted in quotes and matter to be inserted by dashes;–.
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Ch. 15: Effects of Hurricane Katrina on Maintenance Fees: The PTO considers the effects of Hurricane Katrina to be an "extraordinary situation" within the meaning of 37 CFR 1.183 for the affected applicants and patentees. For those patentees who were unable to timely pay a patent maintenance fee due to the effects of Hurricane Katrina, the USPTO will sua sponte waive the surcharge in 37 CFR 1.20(i) for accepting a delayed maintenance fee payment when they file the maintenance fee payment with a petition to accept a delayed maintenance fee under 37 CFR 1.378(c). See 37 CFR 1.183.The PTO advises patentees who need to file a petition to accept a delayed maintenance fee payment due to the effects of Hurricane Katrina to promptly file a petition under 37 CFR 1.378(c) (using PTO form PTO/SB/66 – Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) accompanied by the applicable maintenance fee payment (but not the surcharge under 37 CFR 1.20(i)) and a copy of this notice. The inclusion of a copy of this notice will be treated as a representation that the delay in payment of the maintenance fee was due to the effects of Hurricane Katrina and as a request for sua sponte a waiver of the surcharge under 37 CFR 1.20(i).Patentees are reminded that a petition to accept a delayed maintenance fee payment under 37 CFR 1.378(c) must be filed within twenty-four months from the expiration date of the patent. See 35 U.S.C. 41(c). A petition to accept a delayed maintenance fee payment filed later than twenty-four months after the expiration date of the patent must be filed under 37 CFR 1.378(b) and include a showing that the delay in payment was unavoidable.
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Ch 15: New Rules For Interpretation Of Claim Terms In Infringements: (Sec. J). The Court of Appeals for the Federal Circuit--CAFC), which oversees the PTO, has been reworking and changing its rules for interpreting claims in patent infringement situations for many years. It announced its latest changes in Phillips v AWH Corp. et al., 2005 Jul 12, where all of the judges participated, although some filed a bitter dissent (“The court’s opinion today is akin to rearranging the deck chairs on the Titanic—the orchestra is playing as if nothing is amiss, but the ship is heading for Davy Jones’ locker.”). Here are the CAFC’s latest rules:1. If a claim recites a means which includes some hardware, e.g., “means comprising a baffle”, Sec. 112, par. 6 does not apply so the means clause is not restricted to the part described in the specification and its equivalents and should be interpreted more broadly.2. To interpret the meaning of a crucial term in a claim, use the following procedure:A. As a baseline, determine the meaning of the term to a person with ordinary skill in the art; other sources can be referred to for this.B. See if the context of the term in its claim and other claims sheds light on the term’s meaning. E.g., if the term is used broadly in an independent claim, such as “a baffle” and a dependent claim states that the baffle is inclined, this indicates that the baffle should not be interpreted as being inclined in the independent claim.C. Refer to the specification to interpret the term. If the specification defines the term, this is controlling.D. Look at the prosecution history; this can be useful but less so than the preceding factors.E. Lastly, refer to extrinsic evidence, such as dictionaries, treatises, and testimony of experts. Less reliance should be placed o extrinsic evidence than in the past. The limitations in the specification should generally not be imported into the claims. E.g., if the specification shows a baffle that is inclined and the claim simply recites a baffle, the baffle should not be limited to inclined baffles.G. If a claim is ambiguous, it should be construed in a manner that sustains its validity.One law firm (Bromberg and Sunstein, LLP, of Boston) has suggested that a well-drafted patent application should include in the specification a set of definitions of the crucial words in the claims. I strongly agree and add that the definitions should be made as broad as reasonable. Note that these rules to not apply to patent application prosecution: During prosecution, an examiner is entitled to construe claim terms in the broadest manner possible.
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Ch. 15: Change of Address: (Sec. T). On p. 15/22, change the phone and address of Freiburger, Thomas M., to 415-435-0240, 55 Main St., 2d Flr., Tiburon, CA 94920.
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Ch 16: Erroneous Terms In Lump Sum Calculation: On p. 16/14, col. 2, in lines 6 and 7 up from the bottom, the terms in the calculation are erroneous. Please change "0.5 x 19 x 150,000 x $0.05, or $35,625" to --1/2 x 20 years x $.50 unit price x 150,000 units x 5% rate, or $37,500--.
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Appendix 4: Reduced Filing Fee For Small-Entity Electronic Filers: The filing fee for filing electronically as a small entity is $425, instead of the $500 for filing by mail as a small entity.
Appendix 4: Copyright Registration Fee Increase: The filing fee for filing an application to register a copyright has increased to $45. (06Sep21)
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Appendix 5: New PTO Central Fax Number: As part of its move to its new quarters in Alexandria, VA, the PTO has changed its central fax number to 571-273-8300. For a list of all documents that the PTO accepts by fax, see the notice in the Official Gazette for 2005 July 12.
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Appendix 7--Form 16-3B--Recordation Form Cover sheet: The fax number at the bottom of this sheet should be changed to (571) 273-0140. However the easiest way to record an assignment is do it online: make a PDF or TIFF copy of the signed assignment with a scanner, go to http://epas.uspto.gov/, and fill out the recordation form online, attach the assignment, pay by credit card, and submit the forms for recordal.
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To listen to an interview with your author go to
http://www.acidplanet.com/artist.asp?podcasts=458636&T=4039
Then select "Inventors and Patents".
posted by David Pressman at 3:41 PM
