Question 1

What are the requirements for citing NPL documents in an IDS?

Accepted Answer

What are the requirements for citing NPL documents in an IDS?

When citing Non-Patent Literature (NPL) documents in an Information Disclosure Statement (IDS), specific requirements must be met to ensure proper identification and consideration. According to MPEP 609.04(a):

"Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication."

The MPEP further clarifies:

For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., "www.uspto.gov").
The date of publication to be provided is the date the document was posted on the Internet. If no publication date is known, the applicant must specify in the IDS that no publication date is known.

Additionally:

For NPL not in the English language, a concise explanation of the relevance is required unless a complete translation is provided.
If citing a document that is only available as a scanned copy, include "(scanned copy)" after the document's title in the citation.

Providing complete and accurate information for NPL citations helps examiners efficiently locate and consider these references during the examination process.

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Question 2

What forms can be used for submitting an inventor's oath or declaration?

Accepted Answer

The United States Patent and Trademark Office (USPTO) provides several forms that can be used for submitting an inventor's oath or declaration in patent applications filed on or after September 16, 2012. These forms are:

Forms PTO/AIA/01 through PTO/AIA/11

These forms are designed to ensure that all required information and statements are included in the oath or declaration. They can be found on the USPTO website at www.uspto.gov/PatentForms.

In addition to these forms, the USPTO provides an 'AIA Inventor's Oath or Declaration Quick Reference Guide' to assist applicants in properly completing and submitting the inventor's oath or declaration.

While using these forms is not mandatory, they can help ensure compliance with the requirements set forth in 37 CFR 1.63 and 35 U.S.C. 115. If not using these forms, applicants must ensure that all required information and statements are included in their custom oath or declaration.

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Question 3

What is the credit card security code requirement for USPTO online payments?

Accepted Answer

The USPTO requires a security code for credit card payments made through its website. According to MPEP 509:

Credit card payment submissions made on the USPTO website at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addition to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.

Key points about the security code requirement:

It's part of an authentication procedure to reduce fraudulent or unauthorized credit card use.
The code verifies that the physical card is in the cardholder's possession.
For DISCOVER®, MASTERCARD®, and VISA®, it's a 3-digit code on the back of the card.
For AMERICAN EXPRESS®, it's a 4-digit code on the front of the card.
If you can't read the security code, contact your card issuer.

This requirement enhances security for online transactions but doesn't apply to paper submissions using Form PTO-2038.

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Question 4

What is the Credit Card Payment Form (PTO-2038) and when should it be used?

Accepted Answer

The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:

Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.

Key points about the form:

It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
It's not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.

Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.

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Question 5

Which countries are recognized for priority claims under 35 U.S.C. 119(a)-(d)?

Accepted Answer

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

Parties to the Patent Cooperation Treaty (PCT)
Parties to the Paris Convention for the Protection of Industrial Property
Members of the World Trade Organization (WTO)

The MPEP states: "Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized."

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

Question 6

How can I obtain status information for a patent application?

Accepted Answer

To obtain status information for a patent application, you can:

Check Patent Center or Private Patent Application Information Retrieval (PAIR) on the USPTO website at www.uspto.gov
Contact the Application Assistance Unit (AAU) for applications in pre-examination or post-examination processing via email at HelpAAU@uspto.gov, phone at 571-272-4000 or toll-free at 888-786-0101, or visit their website

If the application has not been published but is pending or abandoned, the AAU will determine if the requester is authorized to receive status information based on their relationship to the application.

Question 7

How can I make a Freedom of Information Act (FOIA) request for USPTO records?

Accepted Answer

To make a Freedom of Information Act (FOIA) request for USPTO records:

Submit a written request to the USPTO FOIA Officer:
- Address: United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450
- Mark the letter and envelope 'Freedom of Information Act Request'
Describe the requested records in detail:
- Include specific information such as dates, titles, names, subjects, etc.
- Provide any known file designations or descriptions
If requesting records about yourself, follow additional requirements in 37 CFR 102.24
If requesting records about another individual, provide either:
- A written authorization signed by that individual permitting disclosure
- Proof that the individual is deceased (e.g., death certificate, obituary)

Direct quote: 'A request for USPTO records that are not customarily made available to the public as part of USPTO's regular informational services must be in writing, and shall be processed under FOIA, regardless of whether FOIA is mentioned in the request.' (37 CFR 102.4(a))

Note: Many USPTO decisions are already available on the FOIA section of the USPTO website at www.uspto.gov/learning-and-resources/ip-policy/electronic-freedom-information-act-e-foia.

Question 8

How can an applicant authorize email communications with the USPTO?

Accepted Answer

To authorize email communications with the USPTO, an applicant must provide a written authorization. According to MPEP 502.03:

'The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.'

The USPTO provides a sample authorization form:

'Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.'

To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description 'Internet Communications Authorized'.

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Question 9

Where can I find information about the practice and procedure under former 37 CFR 1.60?

Accepted Answer

For those needing information about the former procedures, the MPEP provides guidance: For more information pertaining to practice and procedure under former 37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm). This archived version of the MPEP contains the detailed procedures that were in place before the regulation was deleted.

To learn more:

former 37 CFR 1.60

Question 10

What are the best practices for conducting patent interviews?

Accepted Answer

The USPTO provides guidelines for conducting effective patent interviews:

Use interview time efficiently
Present positions with decorum and courtesy
Minimize interruptions during the interview
Group interviews where effective

The MPEP refers to a comprehensive resource: "This policy and other interview tips are detailed in the Interview Best Practices document which is available at www.uspto.gov/InterviewPractice." Applicants and examiners are encouraged to review this document for detailed guidance on conducting productive interviews.

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What are the requirements for citing NPL documents in an IDS?

What forms can be used for submitting an inventor’s oath or declaration?

What is the credit card security code requirement for USPTO online payments?

What is the Credit Card Payment Form (PTO-2038) and when should it be used?

Which countries are recognized for priority claims under 35 U.S.C. 119(a)-(d)?

How can I obtain status information for a patent application?

How can I make a Freedom of Information Act (FOIA) request for USPTO records?

How can an applicant authorize email communications with the USPTO?

Where can I find information about the practice and procedure under former 37 CFR 1.60?

What are the best practices for conducting patent interviews?