Issue 184 | April 14, 2004
USPTO Updates Electronic Procedures

The U.S. Patent and Trademark Office is updating various document handling procedures to make better use of their new Image File Wrapper system. Here are a few of the changes that may affect your practice:

Application Data Sheets for Inventor Information

In addition to the oath or declaration executed by the patent applicant, the USPTO is now using a contemporaneously or later submitted Application Data Sheet as the data source for inventor information when preparing to publish an issued patent. Therefore, the Office is strongly encouraging the filing of an ADS whenever a change to, or correction of, the inventorship data is requested. For example, if the spelling of an inventor’s name is incorrect in the executed oath or declaration, an ADS showing the correct spelling should be filed with any request to correct the spelling of an inventor’s name. The USPTO's EFS submission software called "ePAVE" can be used to author and print an Application Data Sheet that will satisfy the format requirements of 37 CFR 1.76.

That rule also sets forth the requirements for determining whether an ADS or the oath/declaration controls when there are inconsistencies between the documents. The general rule is that the ADS will control, except for the naming of inventors and citizenship. For patent printing purposes, however, the names of the inventors will be taken from the ADS. Thus, if an ADS is filed with names other than those on the oath/declaration, a certificate of correction should also be filed to correct the names of the inventors on the published patent to correspond with those on the oath/declaration.

The "Advance Notice of Change to MPEP 605.04(b), (c) and (f) - Application Data Sheets Are Strongly Recommended When Inventor Information is Changed," dated March 16, 2004, is available at http://www.uspto.gov/web/offices/

Outgoing Correspondence Notification in PAIR

An outgoing correspondence notification feature has been added to the USPTO's Patent Application Information Retrieval system. This feature allows customers to view a list of outgoing USPTO correspondence when they access this feature in Private PAIR. Each entry on this list includes the application serial number, mailing date, and a description of the document. The required forms and instructions on registering for Private PAIR are available on the USPTO Internet’s PAIR New Users Page at http://www.uspto.gov/ebc/digitalcert.htm. "USPTO Announces New Private PAIR Feature" dated March 23, 2004 is available at http://www.uspto.gov/web/patents/outcorrnotice.pdf.

Published Applications May Now Include Amendments

The United States Patent and Trademark Office has begun publishing patent applications with certain amendments that expedite the publication process. For example, these amendments may include changes to the specification that are reflected in a substitute specification, amendments to the abstract, amendments to the claims that are reflected in a complete claim listing, and amendments to the drawings that are reflected in replacement drawing sheets, provided that the substitute specification or amendment is submitted in sufficient time to be entered into the application file wrapper before technical preparations for publication of the application have begun.

According to the USPTO, these technical preparations for publication of an application generally begin between fourteen and nine weeks prior to the projected date of publication indicated on the filing receipt. The provisions 37 CFR 1.215(a) have therefore been waived to the extent that they are inconsistent with this change in practice. 37 CFR 1.215(a) will be revised consistent with this change in practice, when the "Changes To Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan," 68 Fed. Reg. 53816 (Sept. 12, 2003), are made final. "Patent Application Publications May Now Include Amendments" dated March 16, 2004 is available at http://www.uspto.gov/web/offices/pac/dapp

Trademark Operation Closing "ECom" Mailboxes

On September 20, 2004 the USPTO's Trademark Operation will cease to maintain the electronic mail boxes to which applicants now send responses. After that date, applicants wishing to transmit their responses electronically must use the Response to Office Action form within the Trademark Electronic Application System available at http://www.uspto.gov/teas/index.html. Responses to Office Actions that are transmitted by any other electronic means - - for example, responses sent directly to an examining attorney's e-mail address - - will not be accepted. Excerpted from http://www.uspto.gov/web/

"Trademark Operation To Stop Accepting Responses to Office Actions that are Transmitted by E-Mail" dated March 12, 2004 is available at http://www.uspto.gov/web/trademarks/notice_emailresponses.htm.

Certain Paper Trademark Documents To Be Eliminated

Starting April 12, 2004, the USPTO's Trademark Operation will no longer create paper copies of certain trademark-related documents that are submitted to the USPTO in electronic format and/or created by the USPTO. Instead, USPTO employees, as well as interested members of the public, will have to view these documents using the Trademark Image Capture and Retrieval System that features images of the documents associated with the application and registration files. A complete list of the documents for which paper copies will no longer be generated is available in "USPTO Will Cease Creating Paper Copies of Various Trademark Related Documents," dated March 12, 2004, at http://www.uspto.gov/web/trademarks/notice_paperfiles.htm.

Office of Patent Publication May Require Amendments

The Office of Patent Publication may require an amendment of the specification or drawings when it discovers an error in the text or drawings of a patent application, including any inconsistency between the drawings and the application papers. The implementing "Waiver of 37 CFR 1.312 for Documents Required by the Office of Patent Publication" dated February 24, 2004 is available at http://www.uspto.gov/web/offices/pac/dapp/

Electronic Business Center Handling Imaging Problems

The patent Electronic Business Center is now the organizational contact for customers regarding questions about IFW images viewed in PAIR, including images that are incorrectly identified or not viewable to the customer. However, some image problems will still not be addressed by the EBC, including be problems with poor quality originals, skewed images that do not obliterate text, and black lines where no text has been obliterated. The EBC can be reached at 703-305-3028 or toll free at 866-217-9197 between the hours of 6 a.m. and midnight Monday through Friday EST, or by e-mail at: ebc@uspto.gov. Additional information is available in "USPTO Announces Patent Electronic Business Center To Handle IFW Image Problem Inquiries from Customers," dated March 10, 2004, at http://www.uspto.gov/ebc/ebcifw.htm and the EBC website at http://www.uspto.gov/ebc/index.html.

New USPTO Forms for 2004

So far in 2004 the USPTO has released four new forms in fillable PDF format:

The new Transmittal Form can be used as a combined cover page, certificate of mailing, and/or certificate of fax transmission.

For a revised version of these forms that include automatic fee addition, dating, attorney registration number, and file server location entry, or for more information on the latest on electronic document handling procedures at the USPTO, contact the author of this issue of "APLF Updates," Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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