The Most Important Aspects of the New Patent Rules Supporting the U S P T O 's 21st Century Strategic Plan That Come Into Effective in November 2004
I. Introduction
The USPTO has a long range plan, its 21st Century Strategic Plan intended to transform the USPTO into a responsive efficient organization. As part of that plan, the USPTO published a set of final rules changes to the rules of patent practice in 37 CFR. The following lists the three most generally applicable and important changes for U.S. patent practitioners. Much the material below is taken directly from a power point presentation published by the USPTO on these rules changes.
II. Most Generally Applicable and Significant Rules Changes
1. The Ability to Type Sign Certain Papers, With What the USPTO Calls "S" Signatures
S-signatures (§ 1.4(d)(2)):
Example for signing applicant:
/James Jones/
James T. Jones
An S-Signature is any signature between forward slashes that is not a handwritten (§§ 1.4(d)(1) or (e)) or an EFS character coded signature (§ 1.4(d)(3)). It is inserted by electronic (e.g., a word processor) or mechanical means. S-Signatures may be used on documents that are either:
Mailed or hand (courier) delivered,
Transmitted by facsimile, or
Submitted via EFS directly as an EFS Tagged Image File Format (TIFF) attachment (e.g., scanned image), to the Office.
This provision enables practitioners to have an all electronic work flow, thereby enabling elimination of paper during the normal drafting and review activities.
2. The Following Rule Change for Preliminary Amendments Filed with New Applications
Preliminary amendments that are present on the filing date of an application are treated as part of the original disclosure. Applicants are responsible for reviewing all preliminary amendments present on the filing date and providing a reference thereto in a § 1.63 oath or declaration for each such preliminary amendment containing subject matter not otherwise present in the application as filed. Preliminary amendments seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
Therefore, inventor's declarations should include a mechanism (such as a check box) to indicate that a preliminary amendment is being filed with the application, that the preliminary amendment is part of the application as filed, and that the inventor has reviewed the preliminary amendment.
3. Limitations to Amendments After Responding to an Office Action
The following rule changes apply to filings after a response to a first office action.
Supplemental filings such as adding claims or evidence generally will not be entered unless they limit the examiner's work load. Specifically, after a complete reply has been filed, the Office may enter a supplemental reply that is filed before final rejection or allowance and in sufficient time to be entered into the application file, if the subsequent reply is clearly limited upon cursory review to: cancellation of claims; adoption of an examiner suggestion(s); placement of the application in condition for allowance; reply to an Office requirement made after the first reply was filed; correction of informalities (e.g., typographical errors); or simplification of issues for appeal.
This requirement forces practitioners to ensure that a response to a first office action is complete on all issues, and that the response presents all claims that the applicant might consider taking on appeal in response to a subsequent final action.
III. Conclusion
The most important rule changes in the USPTO's Strategic Plan motivated rules being implemented in November 2004 allow typed signatures, define amendments filed with a new application to be part of the new application, and generally precluded filing of amendments that are not in response to an office action after the USPTO has mailed a first office action. Each of these changes requires significant changes in our practice.
If you have any other questions or need further information please feel free to contact us via email athttp://www.neifeld.com.
Richard Neifeld,
President, Neifeld IP Law, PC
Richard Neifeld, Ph.D.
Patent Attorney
Email address: general @ neifeld.com
Education
J.D. The George Washington University Law School 1994 Ph.D. Rutgers University (Solid State Physics) 1985 B.S./B.A. University of Rochester (Physics and Mathematics)
(Cum Laude and Honors) 1980
Experience
Neifeld IP Law P.C. - 2002
Partner in the IP law firm of Oblon, Spivak, McClelland, Maier & Neustadt, PC. - 1996
Patent Attorney - 1994
Patent Agent - 1992
Patent Technical Consultant - 1990
Staff Scientist for the U.S. Army's Laboratory Command - 1986
Post-doctoral Fellow, Rutgers University - 1985-1986
Former chair of the Interference Committee and current chair of the Services Subcommittee of the Interference Committee of the American Intellectual Property Lawyers Association (AIPLA). Member of the AIPLA, American Bar Association, Maryland Patent Lawyers Association, and the Patent Information Users Group. Extensive experience in "specialty matters" in the U.S. patent office, such as appeals, petitions, reexaminations, reissues, public protests, and extensive experience in foreign prosecution, and interferences and related litigation. Extensive experience in due diligence work, including investigations, database searching, and opinions.
Admitted to practice before the United States Patent and Trademark Office, the Virginia State Courts, the United States Court of Appeals for the Fourth Circuit, and the United States District Court for the District of Columbia.
Widely published in IP law publications, frequent lecturer to patent attorneys on patent law topics, and an active member of the patent bar associations. Founder and moderator for the popular "patentinterference" group on thegroups.yahoo.com/group/patentinterference web site, which is a forum for general information on patent law and practice with a focus on patent interference issues.
Co-founder of thewww.PatentValuePredictor.com automated patent valuation service, co-inventor of the underlying macro-economic model for valuing patents, and programmer of some of the code powering the automated valuations.
Five years of scientific research in applied physics areas of electro-optics, III-V materials, microwaves, vacuum deposition technology, superconductors, and electronics directed towards the U.S. Army's electronics, communication, and signal processing needs.