Practice Tips for Foreign Applicants Mark Powell Deputy Commissioner for International Patent Cooperation
Overview Changes in Practice America Invents Act (AIA) Patent Law Treaty (PLT) & Patent Law Treaties Implementation Act (PLTIA) Patent Prosecution Pre-examination Tips Preparing the Application Filing the Application Distinctions in USPTO Patent Practice Patent Prosecution Highway (PPH) Best Practices March 2015 2
Changes in Practice: America Invents Act (AIA) March 2015 3
The Applicant Inventors are no longer the only possible applicants (35 U.S.C. 118, 1.42(a)-(c)) Applicant is no longer synonymous with the person who must execute the oath or declaration The regulations pertaining to being applicant have been separated from the regulations pertaining to execution of the inventor s oath or declaration March 2015 4
The Applicant (cont.) Applicants may be persons ( 1.42(b), 1.46) to whom the inventor has assigned is under an obligation to assign who otherwise show sufficient proprietary interest in the matter A party who has less than the entire right, title, and interest, may not on their own make the application for patent March 2015 5
The Applicant: Assignee, Obligated Assignee For an assignee or obligated assignee ( 1.46(b)(1)) documentary evidence of ownership should be recorded no later than the date the issue fee is paid, for example: an assignment for an assignee, or an employment agreement for an obligated assignee March 2015 6
The Applicant: Sufficient Proprietary Interest For a person who otherwise shows sufficient proprietary interest in the matter, the applicant must submit a petition including: the fee set forth in 1.17(g) ($200); a showing that such person has sufficient proprietary interest; and a statement that making the application is appropriate to preserve the rights of the parties. ( 1.46(b)(2)) Note: Such persons are no longer restricted to situations where all the inventors refused to execute or could not be found or reached after diligent effort. March 2015 7
Inventor s Oath or Declaration An inventor s oath or declaration continues to be required (35 U.S.C. 111(a)(2) and 35 U.S.C. 371(c)) and can be supplied as follows: inventor executes an oath or declaration under 1.63(a) (35 U.S.C. 115(a)) filed in: the U.S. application an international application under PCT Rule 4.17(iv) inventor executes an assignment that contains the statements required by 1.63 (35 U.S.C 115(e) and 1.63(e)) recorded in the Office s assignment database a substitute statement under 1.64 where an inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute (35 U.S.C. 115(d)) March 2015 8
Application Data Sheets An ADS must be submitted when required under 1.55 or 1.78, to claim priority to or the benefit of a priorfiled application under 35 U.S.C. 119, 120, 121 or 365 1.46, when an application under 35 U.S.C. 111 is made by a person other than the inventor the applicant must be specified in the Applicant Information section of the ADS 1.48, for a request to correct or change the inventorship once inventorship has been established under 1.41 March 2015 9
Juristic Entities Juristic entities who seek to prosecute an application, including taking over prosecution ( 1.31 and 1.33(b)(3)): must be represented by a patent practitioner Juristic entities can continue to take actions, such as: executing terminal disclaimers executing statements under 3.73(c) March 2015 10
Changes in Practice: PLT And PLTIA March 2015 11
Restoration of Priority or Benefit Patent Law Treaty (PLT) and the Patent Law Treaties Implementation Act (PLTIA) provide for restoration of right of foreign priority in applications filed more than twelve months (six months for design application) after the filing date of the foreign application domestic benefit of a provisional application in applications filed more than twelve months after the filing date of the provisional application March 2015 12
Restoration of Priority or Benefit (cont.) PLTIA requires that the subsequent application have been filed within two months of the expiration of the twelve-month (six-month in designs) priority or benefit period PLT and PLTIA require that the delay in filing the subsequent application within the priority or benefit period have been unintentional not an extension of the priority or benefit period March 2015 13
Restoration in a United States as Designated/Elected Office For an international application filed under the PCT, a decision to restore the right of priority by RO/US or any other receiving Office is effective in the corresponding U.S. national stage application regardless of criterion (e.g. in spite of due care or unintentional) March 2015 14
Patent Prosecution March 2015 15
Pre-Examination Tips: Preparing the Application Use of European problem/solution format is not necessary format the application according to U.S. rules and procedures see MPEP 608 Use an Application Data Sheet (ADS) even when technically not required March 2015 16
Pre-Examination Tips: Preparing the Application (cont.) Avoid use of multiple dependent claims to reduce claim fees a multiple dependent claim which depends on another multiple dependent claim is improper in U.S. practice see 35 U.S.C. 112(e) and 37 CFR 1.75(c) Avoid Use claims e.g. attempts to claim a process without setting forth any steps involved in the process may result in rejection under 35 U.S.C. 101 and/or 35 U.S.C 112(b) see MPEP 2173.05(q) March 2015 17
Pre-Examination Tips: Preliminary Amendments Avoid submitting Preliminary Amendments on filing* instead, make edits before filing the application A substitute specification will be required if a preliminary amendment present on filing makes any changes to the specification, except for: changes to title, abstract, or claims or addition of benefit claim information to the specification *see the notice Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application, 1300 Off. Gaz. Pat. Office 69 (November 8, 2005), available at http://www.uspto.gov/web/offices/com/sol/og/2005/week45/patrevs.htm March 2015 18
Pre-Examination Tips: Forms Use USPTO forms without altering the language Do not use a combined declaration and power of attorney form USPTO forms can be found at: http://www.uspto.gov/patent/patents-forms March 2015 19
Filing the Application: EFS-Web Properly identify new application filings If submitted, color drawings must be of sufficient quality for details to be reproducible in black and white for publication scanned documents should have a resolution no lower than 300 dots per inch (dpi) March 2015 20
Filing a U.S. National Application from an International Application Two filing routes National Stage application filed under 35 U.S.C. 371 Bypass application filed under 35 U.S.C. 111(a) domestic benefit is claimed to the PCT under 35 U.S.C 120 or 121 March 2015 21
Benefits of Filing Under 35 U.S.C 371 Applicant usually only needs to identify the submission as a filing under 35 U.S.C. 371 and provide the basic national fee International Bureau provides copies of published international application international search report certified copies of foreign priority documents international preliminary report on patentability (Chapter I or II) Unity of invention is used to determine whether an application contains more than one invention March 2015 22
Benefits of Filing a Bypass Application File an idiomatic translation of a non-english PCT rather than a literal translation, as required under 371 Add subject matter to the disclosure the application may be a Continuation-in-Part of the international application Take advantage of an extension of time to pay fees unlike a application filed under 371, where the basic national fee must be paid by the entry deadline Directly incorporate Article 19 or 34 amendments avoids extensive amendments to the application Use of Prioritized Examination, Track 1 accelerated examination with about 12 months to final disposition March 2015 23
Post-Filing: Pre-Grant Publication Tips A Pre-Grant Publication may include amendments to the claims, abstract and drawings will not include amendments to the specification unless submitted as a substitute specification Filing a clean copy of the specification, claims, abstract, drawings and application data sheet in accordance with 37 CFR 1.215(c) will insure that the amendments will be included in the publication after filing the application and receiving the confirmation number, submit the clean copy of specification, claims, abstract, drawings and ADS via EFS-Web using the radial button Pre-Grant Publication under 37 CFR 1.211 to 1.221 For national stage applications (under 35 U.S.C 371), filing a substitute specification including all of the amendments after entering the national stage may be used to generate the Pre- Grant publication March 2015 24
Post-Filing: Publication Corrections Practitioners should include the assignment information in the ADS to assure publication contains this information Review the filing receipt promptly request corrections before publication or export of data for publication When requesting Corrected Publication, be sure to indicate the material mistake(s) made by the Office e.g. a mistake affecting the public s ability to to appreciate the technical disclosure of the patent application determine the scope of the provisional rights sought see 37 CFR 1.221(b) and MPEP 1130 March 2015 25
Distinctions in USPTO Patent Practice March 2015 26
Grace Period General Rule: Information made available to the public before the filing date = prior art Grace Period: Period of time where disclosures do not prejudice rights Region Europe 0* Japan United States Length of Grace Period 6 months 12 months *most European countries March 2015 27
Conflicting Applications Definition: applications containing relevant subject matter which were filed prior to the filing or priority date of the application being examined, although published later e.g. secret prior art Europe, Japan, and the U.S., all deal with conflicting applications differently: Europe Novelty only Self-collision* Japan enlarged Novelty Anti-self-collision Ω United States Novelty and Inventive Step Anti-self-collision Ω *a conflicting application by the same applicant (or inventor) can be used as prior art against the later-filed pending application Ω a conflicting application will not be used as prior art under certain circumstances against a later-filed application by the same applicant (or inventor) March 2015 28
Duty of Disclosure Each individual associated with the filing and prosecution of a patent application has a duty to disclose to the Office all information known to that individual to be material to patentability for each pending claim The office encourages applicants to carefully examine prior art cited in search reports of a foreign patent office in a counterpart application citations in foreign applications are not automatically made of record Common Citation Document the closest information over which the above individuals believe any pending claim patentably defines See 37 CFR 1.56 March 2015 29
Common Citation Document Provides single point access to up-to-date citation data relating to the patent applications of the IP5 Offices (EPO, JPO, KIPO, SIPO, and USPTO) and WIPO/PCT Consolidates prior art cited by all participating offices for the family members of a patent application enables search results for the same invention produced by several offices to be visualized on a single page URL: http://www.epo.org/searching/free/citation.html March 2015 30
Common Citation Document: Data Coverage Among Offices Office Citation Data Search and Examination Data Availability EPO Both patent and non-patent All possible procedures Available when application is published Citing publications from 1978 - present JPO Only references to patent citations Covers all search, examination, opposition and appeal procedures Does not include applicant citations Available when application is published Citing publications from 1965 - present KIPO Currently not available Currently not available Currently not available SIPO Currently not available Currently not available Currently not available USPTO Both patent and non-patent Only applicant and search citations Made available at time of grant N/A Search citation publications from 1947 present WIPO / PCT Both patent and non-patent Only applicant and search citations Made available when application is published N/A Search reports from 1978 present March 2015 31
Patent Prosecution Highway (PPH) IP5 Paris & PCT Global Paris & PCT Bilateral Agreements Paris or PCT March 2015 32
Global/IP5 PPH Countries March 2015 33
Bilateral PPH Agreements Paris Colombia Czech Republic Germany Mexico Nicaragua Philippines Taiwan March 2015 34
Submission of a PPH Request All claims in each U.S. application must sufficiently correspond to the allowable claims in the application in the Office of Earlier Examination Refer to the PPH Web site for the request form and more information e-file the Request/Petition to Make Special Form and the supporting documents via EFS-Web March 2015 35
PPH Web Site for Global / IP5 PPH and Other PPH Forms http://www.uspto.gov/patents-getting-started/internationalprotection/patent-prosecution-highway-pph-fast-track March 2015 36
PPH Web Site for Global / IP5 PPH and Other PPH Forms (cont.) Global PPH request form Bilateral PPH request forms March 2015 37
Best Practices: S-signature A signature inserted between forward slash marks made by electronic or mechanical means, not handwritten consists only of letters, Arabic numerals, or both with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation person signing must insert his or her own S-signature a patent practitioner must supply his/her registration number as part of the S-signature, or immediately below or adjacent to the S-signature Once S-signature applied, the document can be delivered to USPTO by any appropriate means S-signature can be used on the inventor s oath or declaration Examples: /Dr. James T. Jones, Jr./ or /Tony Smith Reg. No. 45,678/ March 2015 38
Best Practices: Priority Document Exchange (PDX) PDX with EPO and JPO EPO - EP applications - non-ep priority documents contained in an EP application PDX with KIPO and SIPO KIPO - KR applications USPTO - U.S. applications - non-u.s. priority documents contained in a U.S. application USPTO - U.S. applications JPO - JP applications - non-jp priority documents contained in a JP application SIPO - CN applications March 2015 39
Best Practices: PDX Retrieval by USPTO Occurs automatically for a foreign application when its priority is claimed in a U.S. application where the foreign application was filed in an office with a USPTO PDX agreement Form PTO/SB/38 required for USPTO to retrieve a priority document not available through PDX or WIPO DAS but contained in an EP or JP application file e.g. the certified copy of a DE application contained in an EP application More information available at: http://www.uspto.gov/patents-gettingstarted/international-protection/electronic-priority-document-exchange-pdx March 2015 40
Best Practices: Digital Access Service (DAS) WIPO DAS depositing office (Office of First Filing) - AU and RO/AU applications - DK and RO/DK applications - ES and RO/ES applications - FI and RO/FI applications - GB applications - International applications filed in RO/IB - SE and RO/SE applications USPTO (Office of Second Filing) - U.S. applications March 2015 41
Best Practices: DAS Retrieval by USPTO Occurs for a foreign application when its priority is claimed in a U.S. application, and the foreign application has been filed in a WIPO DAS Office registered with the WIPO DAS the Access Code of the foreign application has been provided to the USPTO preferably, on the ADS with the foreign priority claim, or on form PTO/SB/38 i.e. Request to Retrieve Electronic Priority Application(s) March 2015 42
Best Practices: PDX and DAS Reminders Verify accuracy of country code, application number, filing date, and Access Code (if applicable) Check filing receipt for indications that automatic retrieval of foreign application will be attempted Request to Retrieve language, and for WIPO DAS Offices, Access Code Provided text on the filing receipt next to the priority claim Check PAIR for successful retrieval of the priority document after the U.S. application has been docketed to an examiner for JP applications, at 19 months from the filing date Applicant bears the ultimate responsibility for ensuring a copy of the foreign application is received by the Office March 2015 43
Best Practices: PDX and DAS Troubleshooting Contact USPTO s Electronic Business Center if Request to Retrieve language not on filing receipt, and priority is claimed to one or more CN, EP, JP, and KR applications the Access Code has been provided (e.g. on the ADS), but filing receipt indicates No Access Code Provided Access Code Provided text appears on filing receipt, but the Request to Retrieve language is missing priority is claimed to a JP application and priority document is required before 19 months, e.g. to overcome prior art applied in an Office action fulfill the certified copy requirement after a Notice of Allowance Application is docketed to an examiner, however, priority document (for other than JP application) not in the file March 2015 44