A number of changes [51] have been made to the rules practice relating to implementing various business goals of the USPTO.
9.1 Requirements for Abstract and Specification
With effect from November 7, 2000, the maximum number of words to be included in the abstract is reduced from 250 to 150. [52]
Additionally, the USPTO has indicated that it will now start to enforce rules that have previously been adopted to facilitate the early publication of applications. [53] Among these are requirements that:
(1) apart from drawings, all papers that are to be part of the USPTO file are to be on the same size paper, which can be either International A4 size or American "letter" size (8.5 ins x 11.5 ins);
(2) the text is dark and clear enough for easy reproduction;
(3) line spacing should be 1.5 or double;
(4) the pages of the text, including the claims and abstract, should be numbered consecutively with the page numbers being located centrally above or below the text (preferably below it);
(5) paragraphs should preferably (but not necessarily) be numbered with the number of the paragraph preceding the first word of the text of the paragraph. The number should be a four digit number using Arabic numerals enclosed in square brackets and shown in bold typeface, for example "[0001]". The paragraph number should be located to the right of the left hand margin. Section headings such as "Field of the Invention" are not to be considered as paragraphs and so should not be numbered.
If the papers submitted do not comply with the requirements, an official action will be issued requiring the filing of substitute pages.
The rules have also been amended to emphasize that any changes to the application papers to be filed must be made before the oath or declaration is signed.
9.2 Changes in Rules Relating to Drawings
A number of changes have been made to the rules relating to drawings, mostly to make them less onerous. The following changes should, however, be noted:
(1) It will no longer be possible to obtain an extension of term for complying with a requirement to correct the drawings issued with a notice of allowability; [54]
(2) Identifying indicia should be placed on the front of drawing sheets in the margin. [55]
9.3 Electronic Filing of Computer Program Listings, Nucleotide and/or Amino Acid Sequences and Tables
37 CFR 1.52 (e) as amended with effect from November 7, 2000, provides for the filing of tables comprising more than fifty pages of text, sequence listings and computer programs on compact discs. Except for sequence listings, duplicate copies are required. If the file submitted is unreadable, for example because it is in a format different from one authorized by the USPTO or because it was corrupted by a computer virus or written to a defective disc, the compact disc will be deemed not to have been submitted. The compact disc must be either a read-only or a write-once disc so that the data recorded on it cannot be changed. The disc must also be in compliance with ASCII and the specification must contain a cross-reference to it.
9.4 The manner of claiming small entity status
9.5 Preferred Order of Contents of an Application
With effect from November 7, 2000, applicants are encouraged to submit an application data sheet with their applications to supply bibliographic information in a format prescribed by the USPTO. [57] The rules set out the order in which information should be supplied as 1) applicant information; 2) address for correspondence (normally the attorney’s address); 3) application information including the title, a suggested classification, number of drawing sheets, suggested drawing to be used in publication and attorney docket number; 4) representative information, including the attorney or agent registration numbers of the attorneys or agents holding powers or authorizations to act in the case; 5) any domestic priority information and 6) any foreign priority information.
Additionally, the preferred order of the contents of a specification has also been changed somewhat. The new order is:
(1) Title;
(2) Cross reference to any related applications (for example, where the application is a continuation, continuation-in-part or divisional of some other application or claims the date of a prior provisional application);
(3) If appropriate a statement about any federal funding relating to the invention;
(4) Reference to any Sequence Listing, table or computer program appendix that may have been submitted with the application on a compact disc and incorporation of the material by reference;
(5) Background of the invention including
a) Field of the invention and
b) Description of related prior art;
(6) Brief summary of the invention;
(7) Brief description of any drawings;
(8) Detailed description of the invention;
(9) Claims;
(10) Abstract; and
(11) Any paper Sequence Listing.
Each of these sections should be preceded by an appropriate heading.
9.6 Requirements with Respect to Information Disclosure Statements
A number of changes have been made with respect to Information Disclosure Statements (IDS).
First, a new rule makes it clear that when filing a continuation-in-part application the duty of disclosure includes all information known to the applicant or others to whom the duty of candor applies to be material to patentability which became available between the filing date of the prior application and the filing date of the continuation-in-part. [58] A cross reference to this rule is included in the applicant's acknowledgment of a duty of candor in the oath or declaration required when filing a continuation-in-part application.
Secondly, the three-month window period allowed to an applicant to file an IDS without payment of a fee or certification as discussed below after filing a continued prosecution application has been abolished since examiners are now expected to take up such applications for prosecution in less than three months after their filing. [59]. The three month period does, however, remain for other types of application. Since the filing of a request for continued examination is not the filing of a new application, there is no window period with respect to filing without a fee or certification for an information disclosure statement filed in connection with a request for continued examination.
Thirdly, the procedure for filing an IDS after issue of a final rejection is simplified. [60]
Fourthly, the form of statement required so as to have an IDS considered without payment of a fee after the end of the window period and before final rejection or considered at all after final rejection has been rewritten to require a statement that the information was first cited in a foreign application issued less than three months prior to the filing of the information disclosure statement or that no item included in the IDS was cited in a communication from a foreign patent office and that to the knowledge of the person submitting the IDS, after making reasonable enquiries, no item included in the IDS was known to any of the persons to whom the duty of candor applies more than three months prior to submission of the IDS. [61]
Fifthly, when citing a prior copending U.S. application it will now be necessary to submit a legible copy of it with the IDS. [62]
Other proposals for amendment that had been mentioned in the USPTO's proposed rules relating to requirements for personal review of the cited art have not been implemented at this time.
9.7 Requirements for Filing Application on Behalf of a Deceased Inventor
The new rules have simplified the filing of an application on behalf of a deceased inventor by the fact that former rule 1.44 which required submission of proof of the power or authority of the legal representative of the dead or insane inventor was repealed with effect from September 8, 2000.
9.8 Preliminary Amendments
It
is very often helpful in U.S. Practice to file a preliminary amendment to try
to improve the application before the Examiner takes it up for review. With
effect from November 7, 2000, the Examiner may refuse to consider a preliminary
amendment that “unduly interferes with the preparation of a first office
action in the application”. However, as long as the preliminary amendment
is filed no later than three months from filing of most applications or, in the
case of a continued prosecution application, at the same time as its filing, it
has to be entered for consideration.
[63]
If time is needed to prepare a preliminary amendment at the time of filing a
continued prosecution application, the USPTO suggests petitioning for
suspension of prosecution to permit its preparation.
[64]
9.9 Late Filing of Priority Claims
The new rules make it clear that, where priority claims are made or a certified copy filed after the payment of the issue fee but before grant of the patent, papers will simply be placed in the file and the patent issued without showing a claim to priority. It will then be up to the applicant to request a certificate of correction to have the claim for priority considered. [65]
9.10 Comments Made by the Examiner and Applicant At or After Allowance.
When issuing a notice of allowance, examiners may provide a statement as to the reasons why the Examiner has decided to allow the application. In view of the importance of the prosecution history in determining the true scope of a patent claim [66], it is important to review any such statement. In November 2000, the rules were changed to delete a sentence stating that no implication could be drawn from the applicant’s failure to comment on the reasons given. The applicant has a right to comment and the rules now simply state that no inference shall be drawn from the examiner's failure to respond to the applicant's comments. [67]
9.11 Examiner’s Power to Request Information from Applicants during Prosecution
With effect from November 7, 2000 examiners have had the right to request certain information from applicants and those connected with them, including whether any commercial database exists that is particularly relevant to the type of invention under consideration; whether the applicant has carried out any search; a copy of any published related information by the inventor that relates to the application; a copy of any published information used to draft the application; if the invention is stated to be an improvement, information as to the basic invention that is being improved; and an identification of any use of the invention known to the inventor at the time the application was filed. [68]
9.12 The Manner in which Amendments are to be Made during Prosecution
The form in which amendment of applications may be made during prosecution of the application will change with effect from March 1, 2001. [69] Traditionally amendments have been made by setting out directions to the examiner by requesting the examiner to effect amendment to the text of the specification and claims and the rules have imposed certain limitations on how this is done, for example requiring that where more than five words were to be amended in a claim the entire claim must be submitted showing deletions in brackets and additions by underlining. The new rules, which apply in all cases except applications for reissue, restrict the old manner of amendment by direction to situations where an entire paragraph is to be replaced by a new clean paragraph accompanied by an additional copy showing the changes made (which can be by the traditional method or "by any equivalent marking system"). [70] Amendments to claims under the new rules require submission of a clean copy of the claim (indicating in parentheses whether the claim is "new", "amended", etc.) accompanied, where the claim is amended, by a marked-up copy of the previous version of the claims showing the changes made (which again can be by the traditional method or "by any equivalent marking system").[71]
9.13 Provision for Expedited Examination for Design Applications on Request
In general one can only request expedited prosecution of a U.S. patent application (making it "special") under particular circumstances such as where there is an intention to manufacture a product in the United States only if it is certain that a patent will be granted (evidence of the availability of sufficient capital to carry out the manufacture has to be submitted in support of an application for acceleration on this ground), there is infringement within the United States or the applicant is elderly or in failing health.
A special rule for expediting prosecution of design applications came into effect on September 8, 2000. [72] This permits the applicant to request expedited examination even if all of the requirements for making special are not met as long as the applicant has carried out its own pre-examination search and advises as to the nature of the search and the results obtained in an Information Disclosure Statement and the drawings themselves are compliant with the rules. The reason for permitting expedited examination for designs is that design patent applications are often filed for items that are fashionable for only a brief period and delays in examination can effectively deprive the designer of any protection whatsoever.
[51] Issued under the title "Changes To Implement the Patent Business Goals" Federal Register, September 8, 2000, page 54604 et seq.
[52] 37 CFR 1.72(b).
[53] 37 CFR 1.52.
[54] 37 CFR 1.85(c).
[55] 37 CFR 1.84(c).
[56] 37 CFR 1.27.
[57] 37 CFR 1.76.
[58] 37 CFR 1.56(e).
[59] 37 CFR 1.97(b)(1).
[60] 37 CFR 1.97(d).
[61] 37 CFR 1.97(e).
[62] 37 CFR 1.98 (a)(2)(iii).
[63] 37 CFR 1.115.
[64] Federal Register, September 8, 2000, page 54637 just before "Comment 56."
[65] 37 CFR 1.55(a)(2)(iv).
[66] A point which was emphasized by the Supreme Court in Warner Jenkinson v. Hilton Davis 520 US 17, 41 USPQ2d 1865, 1997.
[67] 37 CFR 1.104(e).
[68] 37 CFR 1.105. However, if the information is not known to or is not readily available to the parties to whom the request is made, they have simply to say so and this “will be accepted as a complete reply”. The normal rules as to extensions of time and revival of abandoned applications apply to failures to respond to or delayed responses to requests for information under this rule. The USPTO asserts that it has the power to make this rule under the “inherent authority” granted to it under 35 USC 131 and 132 to examine patent applications.
[69] The new form became permissible on November 7, 2000.
[70] 37 CFR 1.121.
[71] The reason for the changes in the rules is to facilitate the printing of the final patent document.
[72] 37 CFR 1.155.
