For those who are still filing by paper, the USPTO announced last week that it will finally be doing away with the requirement for duplicate copies of forms required for processing fees (e.g., an authorization to charge a deposit account).  Before Image File Wrappers (IFWs), when paper filing was an Applicant’s only option, duplicate copies of fee processing forms were required because the USPTO processed fees separately from the paper application file.  Today, however, these forms are scanned into an IFW so that they are viewable throughout the USPTO, even when these forms are submitted by paper.   Even in those few applications in which duplicate copies would still be necessary for processing a fee (e.g., national security applications), the USPTO will make any necessary copies required for processing.

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The USPTO has developed a system to administer continuing legal education to practitioners.  This system, entitled the “Continuing Education for Practitioners” or (“CEP”) system, is intended to “increase efficiency, reduce pendency, and improve quality in the patent process.”  The USPTO states that the CEP system is “built on the recognition that a smoothly operating patent system requires well-qualified USPTO personnel working hand-in-hand with up-to-date patent practitioners.”

The USPTO is currently asking for volunteers to participate in a pilot test of an on-line system to administer the CEP system.   Up to 1000 registered practitioners are sought to help evaluate the system and provide feedback concerning the system’s ease of use and the usefulness of the educational materials.   Importantly, participants in the pilot program will be deemed to have satisfied the first year’s requirement for CEP at such time as the USPTO makes CEP a requirement.  Follow this link more information about the CEP system. 

I have volunteered to participate in the pilot testing.  If I am selected to participate, I will report on the system in a follow up post.

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The USPTO is planning to release an enhanced version of its web-based patent application and document submission system on August 17, 2008.  The enhanced version, EFS-Web 1.4, will include some new features, several of which are based on EFS-Web user requests.

With this enhanced version, all users will be able to launch their e-mail programs through EFS-Web to send information about Acknowledgement Receipts and Pre-Acknowledgement Receipts. Also, registered e-Filers will be able to view newly prepared patent applications if saved in submission packages that are associated with their Customer Numbers and launch e-filed applications in Private PAIR with a click of the PAIR button on the Last 40 Acknowledgement Receipts screen.

From the USPTO website:

The USPTO is pleased to announce the upcoming release of EFS-Web 1.4 on August 17, 2008. New features with this release include:

* BIS Statement on Login Screen: Registered e-Filers must check the checkbox indicating that they have read and accept the terms of the BIS (Bureau of Industry and Security) Statement on the Login screen prior to authentication. The BIS statement will be removed from My Workplace. See EAR (Export Administration Regulation) section of FAQ for more info: http://www.uspto.gov/ebc/efs_faq.htm

* Sequence Listing Enhancements:  e-Filers will be able to upload one sequence listing (txt) file up to 100 MB per submission.  The sequence listing file must be uploaded separately from other types of files.  Sequence listing files that exceed 100MB can be submitted on compact disc via Express Mail. EFS-Web will also display a warning if the sequence listing does not conform to the ST.24 or ST.25 format.

* View Saved Submissions by Customer Number: Registered e-Filers will be able to view Saved Submission packages created for new applications that are associated with their Customer Numbers.

* PAIR Button: Registered e-Filers will be able to launch their e-filed applications in Private PAIR with a click of the PAIR button on the Last 40 Acknowledgement Receipts screen.

* Delete Button on the Attach Document Screen:  e-Filers will be able to delete unwanted files prior to Upload and Validate.
* E-mail Acknowledgement Receipt Info: e-Filers will be able to launch their e-mail programs to send information about Acknowledgement Receipts and Pre-Acknowledgement Receipts.

* Practitioner Registration Status Warning: Registered practitioners will receive a warning to contact the Office of Enrollment and Discipline (OED) if their registration status is not active to practice before the USPTO.

* National Stage Enhancements: When filing a National Stage under 35 USC 371 application, e-Filers will be able to edit the PCT Number and International Filing Date on the Application Data Screen.  EFS-Web will warn applicants if the PCT Number and Filing Date are mismatched.

* First Action Interview Warning on the Attach Document Screen: e-Filers requesting enrollment in the First Action Interview (FAI) pilot program must check a checkbox to confirm compliance with FAI eligibility requirements.

* Fee Codes: Since Priority Documents are now free of charge, the 8007 Fee Code will be removed from the PCT Calculate Fee screen. The 1708 and 1463 Fee Codes have been added to the PCT Calculate Fee screen.. The 1814 Fee Code (Statutory disclaimer) will appear under the “Miscellaneous Patent Fees” and “Post Allowance & Post Issuance Fees” categories.

A Final Point – The USPTO warns that saved submission packages created before August 17, 2008 will not be retrievable after the enhanced version of EFS-Web is deployed.

Click here to read the USPTO announcement.

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Listings of claims are required in most, but not all responses to Office actions.  This post discusses when they are required and why it may be prudent to include them even when they are not.

The Rules
The manner of making amendments in a patent application is governed by 37 CFR. 1.121 entitled “Manner of Making Amendments in Applications”.  Sections (C) and (C) (1) of that rule addresses claim listings, and state:

(c) Claims. … Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application.

(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.

Thus, every filing that includes a change to a claim, a cancellation of an existing claim, or an addition of a new claim, must include a complete listing of all claims ever presented in that application.

A failure to include a listing of the claims when required renders a filing non-compliant.

What about filings in response to an Office action in which no claim changes are made and a listing of the claims is not required (e.g., a Response to a Restriction Requirement of a Request for Reconsideration)?  I have seen such filings prepared both ways; with and without a listing of the claims and I suppose that a case could be made for either approach.  I suggest, however, that it may be a better practice to include a listing of the claims in every response, regardless of whether or not it is required.  Here are a few reasons why.

1. Including a Listing of Claims Makes Examination Easier. When a response does not include a listing of the claims, anyone reviewing the arguments presented will have to refer to at least one other document (e.g., a previous amendment or the original application) to find a listing of the claims.  In other words, omitting a listing requires the reader to sift through the file wrapper to find a listing of the claims.  At a minimum, this is inefficient and inconvenient.  I prefer not putting an Examiner through this trouble.  The Office’s current production quotas are difficult enough for an Examiner to meet.
The bottom line: making the Examiner’s job easier is in everyone’s best interests and can only help improve the quality of examination.  Besides, every Applicant can benefit from some Examiner goodwill.

2.  The USPTO Encourages Inclusion of a Claim Listing In Every Response.
The following is from a frequently asked questions page on the USPTO Website about current amendment practice:

(A10)Q:   May I submit a complete claim listing in a reply when I am not making any changes to the claims, such as responding to a restriction requirement or merely arguing a rejection?A:  Yes. Although a complete claim listing is only required whenever changes are made to any claims, one may be submitted in a reply to an Office action where no changes are being made. It is beneficial to the examiner (and all viewers of the electronic file) to have the most up-to-date set of claims in the most recent paper submitted by the applicant. Note that the claim listing in this situation would not include any claims with markings or any claims with the status identifiers of (new) or (currently amended).

3.  Including a Listing of Claims Promotes Accuracy.
The inclusion of a listing of the claims in every filing makes identifying the most current version of the claims easier for everyone who may pick up the file.   This, in turn, tends to reduce: errors in drafts prepared by support staff; the time needed to review such drafts; and non-compliant amendments.

4.  Including a Listing of Claims Promotes Faster (and Smoother) Review of Work Product.
Including a listing of the claims in every response makes review easier.  And, an easier review tends to be a shorter review.  Shortening the time required for review lessens the overall expense for preparing a filing, especially when the reviewer has a higher billing rate than the practitioner who prepared the filing. Besides, making review easier on the reviewer seems to make that review go a little smoother for the practitioner.

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I believe that the subject of patent reform is always worthy of earnest debate.  So, while I reserve for my readers discussions of the accuracy of this provocative editorial as well as the merits of the positions Sen. Obama allegedly advocates, I recommend reading the editorial if for no other reason than to see others’ views on this important subject and how patent reform is being sold to voters in this election.

I feel responsible to point out to my readers that the editorial was authored by an active member of and donor to the campaign of Sen. Obama by the name of Arti Rai.

The guest editorial can be found here.

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RCE Basics

A Request for Continued Examination (RCE) is a request to continue prosecution of an application.  Essentially, RCE practice can be thought of as a mechanism to buy another full examination of an application without having to refile it.  An application in which an RCE is filed stays with the same Examiner and keeps the same serial number.   RCEs are available for utility and plant applications, but not for design or provisional applications.  RCE practice is governed by 37 CFR 1.114.

The Rules Concerning RCE Practice

37 CFR 1.114 sets forth three requirements/conditions for a proper RCE.

1. Prosecution of the application must be closed.  The prosecution of an application is closed when: a final Office action; a Notice of Allowance; or a Quayle Action has been issued.
2. A “submission” must accompany the RCE.
   
3. The requisite government fee(s) must accompany the RCE.

A “submission” as used in 37 CFR 1.114 includes:

1. an information disclosure statement (IDS);
2. an amendment to a disclosure (i.e., the specification, claims, or drawings);
3. new patentability arguments; or
4. new evidence in support of patentability.

See MPEP 706.07(h)(II).

Some Important Points About RCE Submissions

1.    When any reply to an Office action is outstanding, a submission must meet the requirements of 37 CFR 1.111.  That is, the reply must be “fully responsive” to the last outstanding Office action.  A submission that is not fully responsive renders an RCE deficient and thus improper.

2.    Not every one of the examples set forth in 37 CFR 1.114 will constitute a submission in every circumstance.   Rather, the adequacy of any submission depends on the circumstances in which the RCE is filed.

Example
An IDS filed with an RCE in an application that has been allowed satisfies the submission requirement, since there is no requirement to be fully responsive to any Office action.  That same IDS, however, when filed with an RCE after a final Office action, will not satisfy the submission requirement since it cannot be fully responsive to any Office action.

3.    There is a Pseudo Safe Harbor for Some Submissions that are Not Fully Responsive.
RCEs filed with submissions that are not fully responsive to a last outstanding Office action may sometimes be salvaged, depending on whether the submission was a bona fide attempt to respond to the Office action.

• If the submission is deemed a bona fide attempt to provide a complete reply, the Applicant will be advised of the deficiency and given a new shortened statutory period of one month or thirty days (whichever is longer) to complete the reply.
• If the submission is not deemed a bona fide attempt to provide a complete reply, the RCE will not toll the period for reply and the application will go abandoned after the expiration of the statutory period for reply.

See MPEP 706.07(h)(VI).

4.    A Reply/Request for Reconsideration after a final Office action may satisfy the submission requirement, even when the Reply/Request has been entered and an advisory action indicates that the arguments are not found persuasive.  The fact that the previously submitted arguments were not found persuasive does not preclude them as a submission under 37 CFR 1.114, provided that such arguments are fully responsive.  Consideration of whether any submission is fully responsive to the last outstanding Office action is done without factoring in the “final” status of such outstanding Office action. An Applicant risks a final first Office action, however, so further action would only be prudent.

5.    An appeal brief or reply brief never satisfies the submission requirement.  An RCE that contains a statement that incorporates by reference the arguments in a previously filed appeal brief or reply brief may constitute a submission, however. See MPEP  706.07(h).

6.    An improper RCE in an application under appeal may result in an abandonment or an unwanted allowance. The USPTO treats the filing of an RCE in a case under appeal as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.  Consequently, when an RCE is filed without the appropriate fee or a submission, the application will either be allowed or abandoned, depending on the status of the claims.  If there is at least one allowed claim, the application will pass to issue with the allowed claim(s).  Conversely, if there are no allowed claims, the application will be considered abandoned.   See MPEP  1215.01.

Coming soon - strategic uses of RCEs and submissions

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The USPTO website has a new story about the inclusion of USPTO Director Jon Dudas in Managing Intellectual Property Magazine’s 2008 “Top 50 Most Influential People in IP.”  Apart from the merits of the story (forgive me, but I think it is self-evident that such a list would necessarily include the Director of the USPTO), I found a quote attributed to Mr. Dudas to be of particular interest.  On the alleged merits of requiring Applicants to undertake an art search and provide the Office with a search report as part of a “quality initiative,” he stated:

the applicant knows more about their invention that [sic] anyone else.

There it is.  The Director of the USPTO has now acknowledged that the balance of knowledge in an application weighs in an Applicant’s favor.  A creative patent prosecutor can envision any number of ways this admission might be usable in proceedings before the USPTO.  Just a thought.

The Law Office of Michael E. Kondoudis, PC
www.mekiplaw.com

Patent Attorney in Washington DC

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In an earlier post, I discussed the Office’s policy of compact prosecution and how that policy affects patent prosecution in the USPTO. Under that policy, second Office actions are usually made final, except in limited circumstances. Consequently, except for an allowance or an indication of allowable subject matter, a response that triggers a non-final Office action is often the best result an Applicant can expect. After all, forcing the Office to deviate from its policy of compact prosecution is usually evidence of effective patent prosecution, particularly when a non-final Office action is triggered without a claim amendment.

A Problem - Successive Non-Final Office Actions That Do Not Advance Prosecution

In some cases, however, second, third, or fourth non-final Office actions are arguably the result of poor Office action quality rather than the quality of the patentability arguments. These Office actions are problematic because they don’t advance an application or even provide practical measures of potential patentability, yet they require formal responses. Thus, Applicants incur the expenses of responses without the benefit of advancing prosecution.

A common example of this circumstance is a first non-final Office action that applies poor art. Sometimes, after an Applicant traverses the art rejections with patentability arguments and/or claim amendments that amount to no more than a rewrite of an original independent claim to incorporate an original dependent claim, the Applicant receives another non-final Office action (with new art) and the cycle is repeated.

This post addresses this atypical but vexing situation in which an Applicant is required to respond to successive non-final Office actions that aren’t advancing prosecution.  To be clear, this post is NOT intended to address all successive non-final Office Actions. Rather, this post discusses some suggestions for escaping the administrative “purgatory” of successive non-final Office Actions that do not advance prosecution.

By Design or the Result of Ex Parte Prosecution?

Some practitioners, at least anecdotally, seem to be of the opinion that this could be an intentional practice by some art groups in the USPTO, intended to wear down applicants and get them to either: unduly limit their claims rather than seeking protection for the full scope of their inventions; or to abandon their cases. Others are of the opinion that this is the result of the sometimes inefficient process of ex parte prosecution and that Examiners cannot allow claims that they believe to be unpatentable.

Options to Consider

1. Consider An Appeal
One option might be to appeal at least some of the rejections. An applicant whose claim has been twice rejected may appeal, regardless of whether the claim is under a final rejection. See MPEP § 1204.  So, if any claim has faced the same rejection two times, appeal is an option.

2.  Consider an Interview
An Examiner interview is almost always an effective tool to advance prosecution.  Sometimes an Examiner misses novel features of the claims or misunderstands a patentability argument.  An interview is opportunity to meet the Examiner and to refocus prosecution.

3. Remind the Examiner of The Office’s Instructions for Art Searches
The MPEP establishes guidelines for art searches and the goals of these searches. For example, Section 904.02 of the MPEP, entitled General Search Guidelines, advises Examiners that:

The search [for citable art] should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed.

Further, Section 904.03 of the MPEP, entitled Conducting the Search, instructs that:

It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a careful and comprehensive search, commensurate with the limitations appearing in the most detailed claims in the case, be made in preparing the first action on the merits so that the second action on the merits can be made final or the application allowed with no further searching other than to update the original search.

This section goes on to warn that:

It is normally not enough that references be selected to meet only the terms of the claims alone, especially if only broad claims are presented; but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment. In doing a complete search, the examiner should find and cite references that, while not needed for treating the claims, would be useful for forestalling the presentation of claims to other subject matter regarded by applicant as his or her invention, by showing that this other subject matter is old or obvious.

(emphasis added).  Finally, Section 904 warns that the examiner should cite only the best discovered art.

If anyone else has other strategies or suggestions to address this circumstance, I invite you to share them with other readers in the comments section.

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A common prosecution strategy when an Office action indicates allowed claims or allowable subject matter is to cancel the rejected subject matter and continue prosecuting that canceled subject matter in a continuing application. This strategy, of course, results in the relatively rapid issuance of a patent.

An interesting aspect of this strategy is that some non-final rejections in these continuing applications are appealable. Thus, an Applicant sometimes has the option to pursue an appeal of a non-final claim rejection rather than to make further attempts to traverse it. The remainder of this post discusses when non-final claim rejections are appealable.

The Rule - Twice Rejected Claims are Appealable

Pursuant to Statute and Rule, an Applicant may appeal the rejection of any claim that has been twice rejected, regardless of whether the claim has been finally rejected. In particular, 35 U.S.C. 134(a) provides that:

An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.

Also, 37 CFR 41.31(a)(1) provides that:

An applicant for a patent dissatisfied with a primary examiner’s decision in the second rejection of his or her claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee.

The Twice Rejected Requirement Is Not Limited To A Single Application

Noticeably absent from the Statute and Rule is a requirement that a claim must be “twice rejected” in a particular application. Consequently, an Applicant need not always wait until a claim is twice rejected in a single application to pursue an appeal. Consider the following example.

Example

Claims 1-3 are allowed in a parent application. Claim 4 is rejected.

Applicant cancels claim 4 so that the parent, with claims 1-3, may proceed to issue.

Applicant also files a continuing application to prosecute claim 4 and other claims. Thereafter, the previous rejection of claim 4 is repeated in a first, non-final Office action in the continuing application.

In this scenario, claim 4 has been twice rejected. Thus, the rejection of claim 4 is appealable, despite being non-final.

Four Additional Points About Appeals

1. An Appealed Claim Must Be Under Rejection. An Applicant cannot file an appeal in a continuing application until a claim is rejected, regardless of the number of times that claim may have been rejected in the parent application.
2. There Is No Requirement To Identify In The Notice Of Appeal The Claims To Be Appealed. The rules do not require an Applicant to identify the claims that will be appealed.
3. The USPTO Has A Form Notice Of Appeal Form for EFS-WEB. The USPTO recommends filing a Notice of Appeal as a separate paper and provides form PTO/SB/31 for this purpose. This form can be found at here.

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This post discusses strategic considerations concerning identifications of support for claim amendments.

New Matter is Prohibited

Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing). This section of the MPEP, citing 35 U.S.C. § 132, articulates the rule that no amendment may introduce new matter into the disclosure of an invention.

The question of what constitutes new matter may sometimes be difficult to resolve. After all, an Applicant may rely on every part of the application as originally filed for support for a claim amendment. Additionally, an Applicant is entitled to rely on any inherent or implied teachings of the specification, drawing(s), and claims, in addition to the express teachings. Still further, because there is no in haec verba requirement, an Applicant is not constrained to the terminology used in the application as filed.

In view of the occasional difficulty in resolving new matter issues, and the objection/rejection an Examiner is instructed to make if there is a question of whether a claim amendment might introduce new matter, it may be prudent to consider including identifications of support for claim amendments to help avoid good faith, but ultimately incorrect, new matter rejections.

Identifying Support For a Claim Amendment May Have Risk

A cautious prosecutor, however, will recognize that every identification of support carries with it some risk. For example, there is a possible risk of error. This is of particular concern since an Applicant is correlating claim features to portions of the disclosure. Also, unless all support is identified, an Applicant risks an implication that only the identified portion(s) of a disclosure support an amendment. Both the argument estoppel of the former example and the implication of the latter can be problematic in litigation.

Because of the issues, it may be worth considering reserving identifications of specific support for situations when doing so will be advantageous to the Applicant.

A Risk/Reward Analysis Is Useful to Minimize Unnecessary Identifications of Support

A prosecutor can provide value to a client by engaging in a risk/reward analysis and, when the analysis weighs in favor of identifying support, doing so strategically. Here, the analysis might be whether the likelihood of an objection/rejection outweighs the risk of potential litigation issues, in view of factors such as whether: an Examiner has a history of questioning support for claim amendments; claim terminology deviates from what was used in the application as filed; and support will be difficult to locate in the originally filed disclosure.

Strategic Examples

1. A Generic Identification
When a risk/reward analysis does not weigh in favor of identifying support, the following paragraph might be used:

Applicant submits that support for these amendments can be found in the disclosure as originally filed, and therefore no new matter has been added.

2. A Specific, Non-Limiting Identification of Support
When a risk/reward analysis weighs in favor of identifying support for a claim amendment, the question becomes “how to do it?” An adequate way might be to state:

Applicant has amended claim 1. Paragraph [0025] of the Specification supports this amendment. Thus, no new matter has been added.

This identification is acceptable; it is efficient and direct. I submit, however, that this statement does little to address some of the risks inherent to identifications of support. Thus, there is room for improvement. Consider the following example:

Applicant has amended claim 1. Support for this amendment may be found at least at, for example, paragraph [0025] of the Specification as originally filed. Thus, no new matter has been added.

I submit that the latter paragraph is an improvement over the former because it is non-limiting. Consequently, it at least arguably avoids the potential litigation issues discussed above. First, the latter paragraph uses the word “may” instead of “is” or “can.” The word “is” conveys certainty. The word “can” expresses the ability to do something. In contrast, according to many authorities, the word “may” indicates only a measure of likelihood or possibility. Thus, “may” is arguably more appropriate, since the specified location is “an example.” Second, the latter paragraph is crafted to state only that paragraph [0025] provides an example of support, which can be beneficial if other, better, or more advantageous support is identified later in prosecution or litigation.

In the end, the way an applicant identifies support is not as important as understanding when it is necessary and the risks involved. These considerations will dictate how and when to identify support for a claim amendment.

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