Amendments and Replies to Office Actions

April 3, 2023

Amendments and Replies to Office Actions

Methods of transmitting submissions (not applications) to PTO
1. USPS express mail to addressee: f/d = date-in; use express mail drop box at own risk MPEP513
2. Regular US mail with a certificate of mailing: must be inside US (certificate of mailing is not acceptable from a foreign country!) and include a signed certificate with date of depositMPEP512, 609(B)(1), 706.07(h), 1206
  1. When effective: f/d = date of deposit
  2. Effective for
    1. required submissions such as replies to OA and appeal briefs
    2. RCE
    3. IDS
  3. Not effective for new application, certain interference filings and other non-required submissions
3. Fax: may be outside US (fax is also acceptable from a foreign country!) but must have a certificate of transmission
  1. When effective: f/d = date when transmission is sent
  2. Effective for
    1. required submissions such as replies to OA and appeal briefs
    2. RCE
    3. IDS
  3. Not effective for
    1. New applications
    2. Reexamination requests
    3. Drawings
    4. Original signature
    5. Certified documents
    6. Secrecy order correspondence
    7. Certain interference submissions
4. Hand delivery, mail without certificate of deposit, fax without certificate of transmission, private courier: f/d = date of actual PTO receipt
5. Internet communication: good for certain kinds of communication MPEP502.03
  1. Not effective for OA on merits or replies
  2. Must have applicant’s authorization, which may be withdrawn
  3. Must show sender’s capacity such as registration number
Replies to OA: types
1. Reply to OIPE’s notice to file missing parts
  1. Where the missing part is necessary to obtain f/d: must submit the missing part to obtain f/d
  2. Certificate of mailing and transmission are not effective to obtain f/d
  3. Examples of missing part: Rule 63 oath or declaration, filing fee, inventor’s names, etc.
2. Reply to OA on merits (i.e., amendment for request for reconsideration): applicant must
  1. Make a bona fide attempt to advance the application
  2. Address every rejection and objection by argument and/or amendment
  3. Remarks explaining amendments are required
  4. If applicant is not fully responsive
    1. Unintentionally: examiner may point out deficiency and set new reply time period
    2. Intentionally: application will be abandoned when statutory period expires
3. Notice of appeal after the second or final OA (see outline on petition and appeal)
Amendments as reply to OA
1. Four types
  1. Preliminary amendment: before first OA
    1. Amendments filed after but still on the same day as the application
      1. On or after 2004-09-21: treated as part of the original disclosure (thus allowed to contain new matter)
      2. Before 2004-09-21: treated as part of the original disclosure if a Rule 63 oath refers to the preliminary amendment
    2. Amendment filed after the application’s f/d: not part of the original disclosure (thus not allowed to introduce new matter)
    3. Amendment filed more than 3 months after the application’s f/d: may not be entered if it interferes with the preparation of an OA
    4. A preliminary amendment that cancels claims should be filed with the application
  2. Formal reply to a non-final OA
  3. Supplemental amendment: after first OA: further reply filed after a fully responsive previous reply; may or may not be entered by the examiner
    1. A first supplemental reply will be entered if received by PTO before an action to the first reply has been mailed to the applicant, but
    2. A second supplemental reply will not be entered if it unduly interferes with the OA that is being prepared.
  4. Amendment after final rejection MPEP714.12, 714.13
    1. Will be entered as a matter of right if it:
      1. Cancels rejected claims
      2. Complies with formal requirements
      3. Places the application in better form for appeal
    2. A reply that only touches the merits may be entered upon good and sufficient showing of
      1. Why the amendments are necessary
      2. Why such amendments were not earlier presented
    3. The filing of amendment or request for reconsideration after the final rejection
      1. Does not stop the statutory clock!
      2. To stop the statutory clock: applicant must file NOA, RCE or take other actions
    4. Even when an amendment after final OA is not entered, it is still retained in the file
      1. So any added claims in the amendment will use up the claim numbers re subsequent additional claims (such as in an RCE)
2. Proper forms of a reply to OA
  1. Must be signed by either applicant(s), assignee(s) or representative
  2. In English, in print, on A4 or 8 ½ X 11 paper
3. How to amend
  1. Amendment to specification
    1. Substitute the entire specification; must include
      1. An instruction to replace the specification
      2. A statement that the replacement specification contains no new matter
      3. A marked-up substitute specification showing deletions by strike-throughs or double brackets and additions by underlining
      4. A clean version of the substitute specification
    2. Replacement paragraph or section; must include
      1. An instruction to replace
      2. The replacement text, marked to show deletions by strike-throughs and additions by underlining
      3. Short deletions of up to 5 characters or not easily perceived deletions: may use double bracket
    3. Deletion or addition of a paragraph
      1. Explicit instruction to delete or add target paragraphs
      2. Full text of added paragraphs without underlining
  2. Amendment to claims
    1. Must contain a complete list of all claims with a status identifier: original, currently amended, new, previous presented, withdrawn, canceled, not entered
    2. Must contain full text of any pending or withdrawn (but not canceled) claims
    3. Currently amended claims must show deletions by strike-throughs and additions by underlining; short or not easily perceived deletions may use double brackets
    4. Original or previously presented claims (i.e., not currently being amended): presented in clean form
    5. Canceled claims, not entered claims: no text
    6. Newly added claims
      1. Identify with new status
      2. Use the next claim number
      3. No underlining
  3. Amendment to drawings
    1. Include a page indicating the figure(s) to be revised
    2. Attach replacement sheet(s) of revised drawings, but without makings to highlight the changes
    3. Explain the changes to the drawings either in the indicating page or in the remarks section of the reply, and request approval.
    4. Annotated sheet showing changes in the drawings: voluntarily submitted but must be submitted if the examiner requests it
Interview with PTO; MPEP713
1. Not permitted before first OA, except in a continuing or substitute application (reason: already has OA)
2. Not granted
  1. As a matter of right after final rejection
  2. After appeal has been filed
  3. After allowance
  4. During interference
  5. For sounding out the examiner (i.e., pure discussion without authority to reach agreement)
3. Permitted: to demonstrate model or show videotape
4. Record keeping
  1. Examiner must always file a summary in the record, regardless of who initiated the interview
  2. If the applicant initiated the interview
    1. The applicant must keep record of the interview
    2. But must also reply to the OA in writing despite the interview
5. May be attended by
  1. The applicant
  2. Representative of record
  3. Representative not of record but either
    1. Known to be a local representative of the representative of record, or
    2. Produces authorization and has the application file in possession
6. Interviews must be conducted at PTO; not permitted off PTO premise without Director’s permission.
Due dates and time extension: a game against the clock
1. Start the clock: time to reply to OA is calculated from PTO’s mailing date
2. Duration of the clock
  1. Statutory maximum: 6 months; 35 USC §133
  2. Shortened statutory period (SSP): routinely used by PTO; must be at least 30 days; 35 USC §133; examples include
    1. OA on merits: 3 months
    2. Restriction requirement: 1 month
    3. Ex parte Quayle action (all claims allowed, merit prosecution closed): 2 months
  3. Non-statutory due dates: no maximum due date but PTO still often sets time to reply; examples include
    1. OIPE notice to file missing parts
3. Extending the clock: buy time up to statutory maximum
  1. Rule 136(a) type extension: applicant is entitled to automatic, retroactive extension
    1. How to purchase extension
      1. File petition for an extension: may be waived
      2. Pay the requisite fee or an authorization to charge to deposit account: treated as a constructive petition for extension, thus actual petition is waived
      3. Must still fully reply to OA
      4. Extension cannot go beyond the statutory 6 month maximum
    2. Rule 136(a) extension is not available for:
      1. When PTO says no extension
      2. In reexamination proceedings
      3. Filing reply brief (not appeal brief)
      4. Responding to or appealing BPAI decisions
      5. Filing requests for oral hearings on appeal
      6. In interference proceedings
  2. Rule 136(b) type extension: only when Rule 136(a) type extension is not available
    1. Must be obtained prospectively, no retroactivity
    2. May be obtained for cause
    3. May not exceed the statutory 6 month maximum
  3. Non-statutory due date extension: up to 5 months according to Rule 136(a); automatic and retroactive; examples include
    1. Notice to file missing parts
    2. Applicant’s brief on appeal
4. During the extension: you can do anything: reply to OA, file NOA, file RCE and other continuations
5. Expiration of the clock: when does the clock run out?
  1. If the OA reply due date falls on Saturday, Sunday or a federal holiday (July 4, December 25, January1): then the next PTO business day is the due date, even though this may go beyond the statutory 6 month maximum.
  2. Extended due date is always calculated from the original mailing date.
  3. If the due date does not exist in that month (such as February), then it is the last day of the month: you just have to swallow those few missing days.
6. Stopping the clock: non-final OA or final OA?
  1. Stopping a non-final OA clock: a full response to the non-final OA stops the clock
  2. Stopping a final OA clock
    1. Even a full response to a final rejection does not stop the clock!
    2. Only a proper RCE or NOA will stop the response to OA clock!
      1. Filing RCE or NOA stops the clock while keeping the application pending: applicant may even file continuation after RCE or NOA
7. When the clock runs out: abandonment results!
  1. Failure to properly respond and pay all required fees by the statutory maximum due date will result in abandonment as of the original SSP date, or the properly extended due date.
  2. Improper extension request (such as not paying the requisite fee timely) is ineffective.
8. PTO special rule re final rejection clock: PTO rewards applicant’s diligence MPEP706.07(f)
  1. PTO mails final rejection setting due date to reply (such as a 3 month SSP)
  2. Applicant replies within 2 months
  3. But PTO does not mail an Advisory Action until after the due date
  4. Now: the due date is reset and shifted automatically to the Advisory Action mailing date
  5. But: under no circumstances may the due date go beyond the statutory 6 month maximum!
9. When the applicant cannot purchase time extension: because PTO wants to expedite patent publication MPEP711.03(c), 203.07
  1. To file formal drawings (3 month non-extendable period from notice of allowance)
  2. To pay the issue fee (3 month non-extendable period from notice of allowance)
Statutory Invention Registration (SIR): waives the right to receive patent on the claims; MPEP1100
1. Converted from a nonprovisional application
2. Must satisfy §112 requirements and has formal drawings
3. Must be filed while the application is still pending
4. May be withdrawn
  1. Before the notice of intent to publish
  2. Thereafter must petition to withdraw
5. SIR is prior art as of the nonprovisional application’s f/d.
6. A fee is required
Abandonment
1. Express abandonment
  1. Must be signed by
    1. Representative of record
    2. Assignee of the entire interest
    3. All applicants where there is no assignee
    4. A combination of all applicants and partial assignees
  2. Not effective after issue fee has been paid, unless there is time to pull the application from issue
2. Unavoidable abandonment: revival MPEP711.03(c)
  1. Full reply to OA or a continuing application
  2. A showing that the delay was unavoidable: very hard to establish
  3. Relatively small fee
  4. Applicant must file terminal disclaimer to give up the abandoned patent term for the following:
    1. Design application
    2. Utility or plant application filed before 1995-06-08
    3. Utility or plant application filed between 1995-06-08 and 2000-05-20 (AIPA) and abandoned during appeal, interference or secrecy order
3. Unintentional abandonment: revival MPEP711.03(c)
  1. Full reply to OA or a continuing application
  2. A simple statement that the entire delay was unintended
  3. Relatively large fee
  4. Applicant must file terminal disclaimer to give up the abandoned patent term for certain application types:
    1. Design application
    2. Utility or plant application filed before 1995-06-08
    3. Utility or plant application filed between 1995-06-08 and 2000-05-20 (AIPA) and abandoned during appeal, interference or secrecy order
4. Failure to timely pay maintenance fee: revival
  1. Unavoidable failure to pay: requires
    1. A showing of unavoidable delay + a petition
    2. Payment of maintenance fee + a relatively small surcharge
  2. Unintentional failure to pay – only effective within 24 months after the grace period: requires
    1. A statement that the delay was unintentional
    2. Payment of maintenance fee + a relatively large surcharge

Amendments and Replies to Office Actions

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