USPTO Inventor Info Chat Series ... USPTO Inventor Info Chat Series: Office of Innovation...

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Transcript of USPTO Inventor Info Chat Series ... USPTO Inventor Info Chat Series: Office of Innovation...

  • USPTO Inventor Info Chat Series:

    Office of Innovation Development

    Presenters: Charles Kim & Namrata (Pinky) Boveja

    Moderator: Robert Hodge

    July 20, 2017

    Email questions to:

    inventorinfochat@uspto.gov 2

  • Office of Innovation Development

    • In Person Assistance (by appointment) for Pro Se Applicants

    • Assistance Hotline 1-866-767-3848

    • Patent Email Support innovationdevelopment@uspto.gov

    • PTRC Partnership for Patent Education Courses – Virtual Assistance Pilot Program

    • Inventor Outreach – Independent Inventor Conferences

    – Education for Inventor Organizations

    • http://www.uspto.gov/inventors

    3 Email questions to:

    inventorinfochat@uspto.gov

    mailto:innovationdevelopment@uspto.gov http://www.uspto.gov/inventors

  • Overview

    • What is a Petition

    – Five Components of a Petition

    • Specific Petition Types

    • Helpful Hints

    Send your questions to:

    inventorinfochat@uspto.gov

    Email questions to:

    inventorinfochat@uspto.gov 4

    mailto:inventorinfochat@uspto.gov

  • Channels for Review

    • Appeal

    • Challenges relating to the rejection of claim(s) (twice rejected)

    • Petition

    • Certain action/inaction of examiner or other USPTO official that is not subject to appeal

    5 Email questions to:

    inventorinfochat@uspto.gov

  • What is a petition?

    A formal written request made to an official

    person or organized body.

    Merriam-Webster Dictionary

    6 Email questions to:

    inventorinfochat@uspto.gov

  • Five Components of a Petition

    1. Must be in writing -37 CFR 1.2

    • Each distinct subject in a separate paper-37 CFR 1.4(c)

    • Should be directed to deciding official (MPEP 1000)

    • Must be properly signed – 37 CFR 1.33(b)

    7 Email questions to:

    inventorinfochat@uspto.gov

  • Five Components of a Petition

    (Contd.) 2. Must contain a statement of:

    – Facts involved

    – Points to be reviewed

    – Relief requested

    Note:

    Copies of all evidence MUST be included

    8 Email questions to:

    inventorinfochat@uspto.gov

  • Five Components of a Petition

    (Contd.) 3. Must be accompanied by Fee, if

    required, to avoid summary dismissal

    Note:

    Recommend a general authorization to charge

    deposit account

    9 Email questions to:

    inventorinfochat@uspto.gov

  • Five Components of a Petition

    (Contd.) 4. Must be timely filed per regulation or statute

    • Two (2) months for any renewed petition,

    unless otherwise specified

    • The mere filing of a petition does not stay the

    period for reply or other proceedings

    10 Email questions to:

    inventorinfochat@uspto.gov

  • Five Components of a Petition

    (Contd.) 5. Must comply with any specific requirements as provided by statute, regulation or USPTO Policy

    • Such as…

    – Fees

    – Terminal Disclaimers

    – Notification of foreign filing, etc.

    11 Email questions to:

    inventorinfochat@uspto.gov

  • Decision Types

    • Grant

    • Dismissal (intermediate refusal)

    • Denial (final agency action)

    12 Email questions to:

    inventorinfochat@uspto.gov

  • Office of Petitions

    …is the central repository for deciding

    most petitions, including those signed by

    the Commissioner or other top USPTO

    officials.

    MPEP 1002.02(b)

    13 Email questions to:

    inventorinfochat@uspto.gov

  • Petitions Handled in the Office of

    Petitions • The Office of Petitions handles over 45 different petition types

    • See the link below for further guidance on the petitions handled

    by the Office of Petitions. http://www.uspto.gov/patents-application-process/petitions

    • See generally MPEP 1002.02 to determine the deciding Office for

    various petition types

    14 Email questions to:

    inventorinfochat@uspto.gov

    http://www.uspto.gov/patents-application-process/petitions

  • Frequently Filed Petitions in the

    Office of Petitions • Patent Prosecution Highway (PPH)

    • Revival Based on Unintentional Delay in

    Abandoned Application

    • Track One (Prioritized Examination)

    • Unintentionally Delayed Claim for Priority

    • Withdrawal of Attorney From Application

    15 Email questions to:

    inventorinfochat@uspto.gov

  • Patents Petitions Timeline

    • Provides applicants access to data on petitions that can be submitted during each stage of patent prosecution process

    • Provides information related to each specific petition and deciding office.

    • Provides information on both the historical grant rates and the pendency of decided petitions

    • The Patents Petitions Timeline can be found at: https://www.uspto.gov/patents-application- process/petitions/timeline/patents-petitions- timeline#step1

    16 Email questions to:

    inventorinfochat@uspto.gov

    https://www.uspto.gov/patents-application-process/petitions/timeline/patents-petitions-timeline#step1

  • Patents Petitions Timeline (Contd.)

    Email questions to:

    inventorinfochat@uspto.gov 17

  • Patents Petitions Timeline (Contd.)

    Email questions to:

    inventorinfochat@uspto.gov 18

  • • ePetitions can be completely filled out online • Decisions are instantaneous and uploaded to IFW • ePetitions will only be accepted if every requirement is satisfied,

    therefore the only decision of record is a grant

    • When the ePetition is granted, petitioner will receive an acknowledgement receipt that will also include a grant letter confirming approval of the ePetition

    • Newly developed ePetitions Computer Based Training is available at: https://www.uspto.gov/patents-application-process/applying- online/epetition-resource-page

    • A Quick Start Guide for ePetitions is available at: http://www.uspto.gov/patents/process/file/efs/guidance/epetition- quickstart.pdf

    19 Email questions to:

    inventorinfochat@uspto.gov

    https://www.uspto.gov/patents-application-process/applying-online/epetition-resource-page http://www.uspto.gov/patents/process/file/efs/guidance/epetition-quickstart.pdf

  • Email questions to:

    inventorinfochat@uspto.gov 20

  • Web-based ePetitions:

    • Petition to Make Special Based on Age (37 CFR 1.102)

    • Request for Withdrawal as Attorney or Agent of Record (37 CFR 1.36)

    • Petitions to Withdraw from Issue after Payment of the Issue Fee

    • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2)) – Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3))

    – Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2) with Assigned Patent Number)

    – Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3) with Assigned Patent Number)

    • Petitions for Revival – Petition to Accept Late Payment of Issue Fee - Unintentional Late Payment (37 CFR 1.137(a))

    – Petition for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))

    – Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(a))

    – Petition for Revival of an Abandoned Patent Application Abandoned Unintentionally(37 CFR 1.137(a)) (For Cases Abandoned After 1st Action and Prior to Notice of Allowance)

    • Petition to Correct Assignee After Payment of Issue Fee (37 CFR 3.81(b))

    • Petition to Accept Unintentional Delayed Payment of the Maintenance Fee (37 CFR 1.378(b))

    21 Email questions to:

    inventorinfochat@uspto.gov

  • Data Visualization Center

    Email questions to:

    inventorinfochat@uspto.gov 22

  • Frequently Filed Petitions

    Email questions to:

    inventorinfochat@uspto.gov 23

  • E-Petitions and Non E-Petitions Data

    Email questions to:

    inventorinfochat@uspto.gov 24

  • Petitions to Make Special

    OPET decides Petitions

    – To make special for Age/Health

    – Under Patent Prosecution Highway

    – For Prioritized Examination

    – Cancer Immunotherapy Pilot Program

    Technology Center decides Petitions under Accelerated Examination

    – Other petitions to make special will be processed using the revised

    procedure for accelerated examination. ( MPEP § 708.02a ) See the form

    PTO/SB/28.

    25 Email questions to:

    inventorinfochat@uspto.gov

    http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm

  • Petitions to Make Special (Contd.)

    Age

    • Provide a signed statement from applicant or a registered practitioner that he or she has evidence that the applicant is 65 years of age or older

    • Use the form PTO/SB/130

    Health

    • Provide a sign