1 United States Patent and Trademark Office PETITIONS PRACTICE USPTO Office of Patent Legal...

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United States Patent and Trademark Office

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Office of Patent Legal Administration 571-272-7701

PETITIONS PRACTICE COMMON ERRORS

PETITIONS PRACTICE COMMON ERRORS

Office of Patent Legal AdministrationOffice of Patent Legal AdministrationOffice of Patent Legal AdministrationOffice of Patent Legal Administration

United States Patent and Trademark Office2

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37 CFR 1.57 Incorporation by reference37 CFR 1.57 Incorporation by reference

• Filing a petition when a filing date has been granted.

– Merely an amendment is needed.

• Requesting relief under 37 CFR 1.57 based on a claim for priority under 1.55 or under 1.78 that was either:

– not present on filing of the application, or – not properly claimed on filing of the application.

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37 CFR 1.57 (cont.)37 CFR 1.57 (cont.)

• Filing the petition and amendment to add the inadvertently omitted material as a single paper.

• Attempting to amend the application to include drawings (or pages of specification) that are different from those contained in the prior-filed application.


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37 CFR 1.78 Claiming benefit of earlier filing date37 CFR 1.78 Claiming benefit of earlier filing date

• Failure to make proper specific reference to the prior-filed application.

– Not stating the relationship between applications (CON, DIV, CIP) for benefit claims under 35 U.S.C. 120, 121 and 365(c).

– Not establishing copendency throughout the entire chain of prior applications for benefit claims under 35 U.S.C. 120, 121 and 365(c).

– Including in the reference to the prior application an incorporation by

reference statement that was not present on filing of the application.

• Failure to sign a Supplemental Application Data Sheet (ADS).


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37 CFR 1.53 Application number, filing date, and completion of application37 CFR 1.53 Application number, filing date, and completion of application

• Filing an application without a properly itemized return postcard.

– Example: If applicant was filing 15 pages of specification, including three (3) pages containing 10 claims, six (b) sheets of drawings containing Figures 1, 2, 3, 4A, 4B, 5, and an executed declaration, a properly itemized postcard would recite:

15 pages of specification, 10 claims, 6 pages of drawings containing Figs. 1, 2, 3, 4A, 4B, 5, and executed declaration (2 pages).


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37 CFR 1.10 Filing of correspondence by “Express Mail”37 CFR 1.10 Filing of correspondence by “Express Mail”

• Failure to obtain an “Express Mail” mailing label that shows the “date-in” as entered by the USPS.

• Failure to generate corroborating evidence of deposit that came into being after deposit and within one business day of deposit.


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37 CFR 1.8 Certificate of mailing or transmission37 CFR 1.8 Certificate of mailing or transmission

• Failure to supply a copy of the previously submitted correspondence.

• Reliance on an unsigned certificate of mailing or transmission.

• Failure to include a statement from the person who actually signed the certificate of mailing or transmission.


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37 CFR 1.137(b) Revival of Application Unintentionally Abandoned37 CFR 1.137(b) Revival of Application Unintentionally Abandoned

• Filed by practitioner not in position to have first-hand or direct knowledge of the facts and circumstances of the delay at issue.

– Practitioner must make a reasonable inquiry into the facts and circumstances of the delay at issue.


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37 CFR 1.137(b) (cont.)37 CFR 1.137(b) (cont.)

• Stating “The entire delay…was unintentional” when a portion of the delay was intentional.


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37 CFR 1.378(b) Acceptance of delayed payment of maintenance fee37 CFR 1.378(b) Acceptance of delayed payment of maintenance fee

• Initial petitions are filed with little showing that reasonable care was taken to ensure the timely payment of the maintenance fee.

• Must enumerate steps in place to ensure timely payment of maintenance fee.

• Remember, statements from proper parties are required.


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37 CFR 3.81 Issue of Patent to Assignee37 CFR 3.81 Issue of Patent to Assignee

• Normally patent issues to assignee based on assignment data provided at payment of issue fee on Form 85(b).

• In order to grant a petition to correct the assignee data on a patent, a petition under 3.81(b), along with a request for a certificate of correction, are required.

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37 CFR 3.81 (cont.)37 CFR 3.81 (cont.)

• Failure to record assignment in the Office prior to issuance of patent.


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37 CFR 1.47 Filing when an inventor refuses to sign or cannot be reached37 CFR 1.47 Filing when an inventor refuses to sign or cannot be reached

• Alleging refusal of the inventor to join in the application without showing that a bona fide attempt was made to present the inventor with all of the application papers (specification, claims, and drawings).

• Submitting insufficient proof of “diligent effort” to find or reach the non-signing inventor.


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37 CFR 1.47 (cont.)37 CFR 1.47 (cont.)

• Filing a petition under 37 CFR 1.47(b) when at least one joint inventor is available.

• Submitting a declaration that is not in compliance with 37 CFR 1.63 or 1.64.

• Failure to properly execute the declaration in a 37 CFR 1.47(b) petition.


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Closing Tips or RemindersClosing Tips or Reminders

• Provide statements of facts from persons with first-hand knowledge.

• Provide adequate showing that a person signing on behalf of an assignee has authority to act on behalf of assignee.

• Do not combine Petitions with other Papers.

• Redact personal information.

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United States Patent and Trademark Office

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Patent Term AdjustmentPatent Term AdjustmentPatent Term AdjustmentPatent Term Adjustment


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Patent Term Adjustment (PTA)Patent Term Adjustment (PTA)Patent Term Adjustment (PTA)Patent Term Adjustment (PTA)

Patent Term Adjustment provisions can be found:

--- 35 U.S.C. § 154(b)

--- 37 CFR §§ 1.702 - 1.705

• Recent changes to rules related to PTA can be found:

-Revision of Patent Term Extension and Adjustment Provisions (RIN 0651-AB57) 1282 Off. Gaz. Pat. Office 100 (May 18, 2004), 69 FR 21704 (April 22, 2004), final rule

- Rules that have been changed include PTA §§ 1.702(e), 1.703(f), 1.704(d), and 1.705(e) and PTE §1.701(a)(3)


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• The patent term adjustment (PTA) provisions of the AIPA are effective May 29, 2000 and apply to utility and plant applications filed on or after May 29, 2000

• The patent term extension (PTE) provisions of Public Law 103-465 (URAA) apply to utility and plant applications filed before May 29, 2000, but on or after June 8, 1995

• Patent term adjustment or extension under 35 U.S.C. § 154(b) does not apply to design applications or to any application filed before June 8, 1995



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• Effective date: May 29, 2000 A continued prosecution application (CPA) under 37 CFR §

1.53(d) is a new application

– Filing a CPA on/after May 29, 2000 in an application filed before May 29, 2000 causes the application (CPA) to be eligible for PTA under the AIPA

– Filing an RCE in an application filed before May 29, 2000 does not cause the application to be eligible for PTA under the AIPA

– CPA practice has been eliminated as of July 14, 2003



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• Provides three (3) bases for adjustment:

– USPTO failure to take certain actions within specified time frames (35 U.S.C. § 154(b)(1)(A))

– USPTO failure to issue a patent within three years of the actual filing date (35 U.S.C. § 154(b)(1)(B))

– Delays due to interference, secrecy order, or successful appellate review (35 U.S.C. § 154(b)(1)(C))

• Provides day-for-day adjustment for each failure or delay resulting in adjustment



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• Failure to take certain actions within specified time frames (14-4-4-4):

Failure to initially act on the application within fourteen (14) months after filing/national stage entry date

Failure to act on a reply or appeal brief within four (4) months after date the reply or appeal brief is filed

Failure to act on an application within four (4) months after a BPAI or court decision if allowable claims remain in the application

Failure to issue the patent within four (4) months of the date the issue fee was paid and all outstanding requirements were satisfied



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• Provision for initially acting on the application within fourteen (14) months after filing/national stage entry date satisfied by:– first Office action on the merits, including

• ex parte Quayle action• notice of allowance or notice of allowability

– written restriction or election of species requirement– examiner’s requirement for information under 37 CFR § 1.105



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• USPTO failure to issue a patent within three years of the actual filing date:

In an international (PCT) application, “actual filing date” in 35 U.S.C. § 154(b)(1)(B) means the date national stage processing commences

The three-year period does not include time consumed by any of--

– Continued examination (RCE) under 35 U.S.C. § 132(b)

– Secrecy order, interference, or any appellate review

– Applicant-requested delays



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• Delays caused by an interference proceeding (35 U.S.C. § 135(a))

• Delays caused by imposition of a secrecy order (35 U.S.C. § 181)

• Delays caused by successful appellate review (requires a BPAI/court decision reversing an adverse patentability determination)

– all rejections of at least one claim must be reversed

– In some instances, a remand shall be considered a decision reversing an adverse patentability determination

• These delays are the bases for patent term extension under Public Law 103-465 (URAA)



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• A remand by the BPAI shall be considered a decision reversing an adverse determination of patentability for patent term adjustment purposes, if:– remand is by a panel of the BPAI;– The remand is the last action by a BPAI panel in the

application; and – No request for continued examination under 35 U.S.C. §

132(b) (37 CFR § 1.114) is filed under the remand and before the examiner’s next action under 35 U.S.C. § 132 or notice of allowance under 35 U.S.C. § 151.

– See 37 CFR § 1.702(e)



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• Limitations on adjustment: No double counting of overlapping delays

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0 14 36

No adjustment beyond any date specified in a terminal disclaimer



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• Limitations on adjustment: Reduction of adjustment for period during which applicant failed

to engage in reasonable efforts to conclude processing or examination of an application

Regulations define what is a failure to engage in reasonable efforts to conclude processing or examination of an application (see 37 CFR §§ 1.704(b) and(c))



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• Failure to engage as defined by regulation: Failure to reply to any Office action or notice within three months

– Regardless of period for reply set in the action or notice Suspension of action or deferral of issuance of a patent at the

applicant’s request Abandonment of the application (or failure to file a timely petition to

withdraw an improper holding of abandonment)



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Failure to engage as defined by regulation:

Conversion of a provisional application into a nonprovisional application

– File a nonprovisional application claiming benefit of the provisional rather than convert the provisional application into a nonprovisional application

Submission of a preliminary amendment/paper: (1) less than one month before an Office action or notice of allowance;(2) that requires the mailing of a supplemental Office action/notice of allowance

Submission of an incomplete reply (37 CFR § 1.135(c))



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Submission of a supplemental reply/paper – Except if expressly requested by the examiner

Submission of an amendment/paper after a BPAI/court decision:

(1) less than one month before an Office action or notice of allowance; (2) that requires the mailing of a supplemental Office action/notice of allowance

– Does not include BPAI decisions containing a rejection under 37 CFR § 1.196(b) or statement under 37 CFR § 1.196(c)



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Submission of an amendment under 37 CFR § 1.312 or other paper after a notice of allowance

Prosecution via a continuing application

– Patent term adjustment will not include any period that is prior to the actual filing date of the application that resulted in the patent



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Clarification of 37 CFR § 1.704(c)(10)- No reductions for paper filed after notice of allowance including:

• Fee(s) Transmittal (PTOL-85B)

• Power of Attorney

• Power to Inspect

• Change of Address

• Change of Status

• Response to examiner’s reason for allowance

• Letters related to government interests

• See 1247 Off. Gaz. Pat. Office 111 (June 26, 2001)



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Clarification of 37 CFR § 1.704(c)(10)- Reductions for paper filed after notice of allowance including:

• Request for refund

• Status Letter

• Amendments under 37 CFR § 1.312

• Late priority claims

• Certified copy of priority document

• Drawings (whether or not they were required)

• Oaths or Declarations

• Letters related to biological deposits

• See 1247 Off. Gaz. Pat. Office 111 (June 26, 2001)



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Certificate of Mailing under 37 CFR § 1.8

The date of actual receipt of papers (e.g., replies, appeal briefs) in the USPTO (37 CFR § 1.6) is the date used in calculating patent term adjustment

– the certificate of mailing under 37 CFR § 1.8 is not the date used in calculating patent term adjustment (37 CFR § 1.703(f))

Papers and fees continue to be accorded 37 CFR § 1.8 benefits for timeliness purposes



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Procedures for determining adjustment:

The patent issue date is needed to calculate the patent term adjustment

35 U.S.C. § 154(b)(3)(B)(i) requires the USPTO to include a patent term adjustment determination with the notice of allowance

PALM will calculate the adjustment at time of allowance based upon projected issue date and include that determination in the notice of allowance



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• 35 U.S.C. § 154(b)(3)(B)(ii) provides for one request for reconsideration of USPTO’s patent term adjustment determination

• Requests for reconsideration of USPTO’s patent term adjustment determination must

– Be filed no later than payment of issue fee

– Include a $200 fee

– Set forth specific information concerning the appropriate patent term adjustment



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Specific information required in a request for reconsideration:– The correct patent term adjustment– The bases for the adjustment– The relevant dates for which an adjustment is sought and the

adjustment to which the patent is entitled– Whether the patent is subject to a terminal disclaimer (and date in

the disclaimer)– Any circumstances that constitute a failure to engage in reasonable

efforts to conclude processing or examination of such application (or a statement that there were no such circumstances)



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• Applicants may also request reinstatement of period reduced due to failure to reply to any USPTO action within three months

• The reinstatement request must be filed with a request for reconsideration of patent term adjustment and include:

– An additional $400 fee

– A showing that the failure to reply to a USPTO action within three months occurred “in spite of all due care”



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Examples of showings which may establish that applicant was unable to respond within three months in spite of all due care:

• A showing that the original three month period was insufficient to obtain test data necessary for an affidavit or declaration that was submitted with reply outside the three–month period

• A showing that applicant was unable to reply within the original three-month period due to a natural disaster

• A showing that applicant was unable to reply within the original three-month period due to the death of a sole practitioner

• See Changes to Implement Patent Term Adjustment under Twenty –Year Patent Term, 65 FR 56365, 56389 (Sep. 18, 2000); 1239 Off. Gaz. Pat Office 14, 34 (Oct. 3, 2000)



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Examples of showings that would NOT establish that applicant was unable to respond with three months in spite of all due care:

• Applicant’s or representative’s preoccupation with other matters (e.g., an inter parties lawsuit or interference) that is given priority over the application

• Illness or death of the practitioner in charge of application if the practitioner is associated in a law firm with other practitioners

• Time consumed with communications between the applicant and his or her representative, regardless whether the applicant resides in the US or chooses to communicate with the US representative via foreign representation

• Vacation or other non-attention to an application that results in failure to reply within the three-month period

• Applicant filing a reply on or near last day of three-month period using certificate of mailing under 37 CFR § 1.8 rather by Express Mail under 37 CFR § 1.10

• Failure of clerical employees of applicant’s representative to properly docket the Office action or notice for reply or perform other tasks necessary for reply within three months



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PALM will make a final calculation when the patent number and issued date are assigned

Patent will include final adjustment determination

See Patent Term Extension or Adjustment Information Printed on Notice of Allowance and Issue Fee and Patent Front Page, 1242 Off. Gaz. Pat. Office 112 (Jan. 16, 2001)



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If the patent term adjustment on the patent differs from that on the notice of allowance, applicant may file a request for reconsideration of the patent term adjustment under 37 CFR § 1.705(d). (Note that in the past a request for reconsideration could have only been requested when the patent issued on a date other than that previously projected.)

See Revision of Patent Term Extension and Adjustment Provisions (RIN 0651-AB57) 1282 Off. Gaz. Pat. Office 100 (May 18, 2004), 69 FR 21704 (April 22, 2004), final rule.



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Section 1.705(d)(as amended) provides that:

• any issues that were raised, or could have been raised, in an application for PTA under 37 CFR § 1.705(b) shall be dismissed as untimely as to those issues.

• the period of time in which a patentee may request reconsideration of the PTA is within two months of the date the patent issued (in the past this period was thirty days).

• the changes to § 1.705(d) are effective on May 24, 2004, and any patent issuing after such date will be subject to the amended rules. Patentees seeking to file a request for reconsideration under § 1.705(d) of a patent issuing before May 24, 2004 are subject to the rule prior to the amendment.



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Judicial review of USPTO determination:

Applicant (patentee) has 180 days from patent grant to seek judicial review of the USPTO’s adjustment determination

– Judicial review is not to delay patent grant

No third party challenge to USPTO determination prior to patent grant


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