Question 1

Can an applicant withdraw email communication authorization with the USPTO?

Accepted Answer

Yes, an applicant can withdraw their authorization for email communication with the USPTO. According to MPEP 502.03:

'A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization.'

The USPTO provides a sample form for withdrawing authorization:

'The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.'

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 This form can be filed via EFS-Web using the document description 'Internet Communications Authorization Withdrawn'.

To learn more:

Question 2

How can I access pre-1957 patent assignment records?

Accepted Answer

Pre-1957 patent assignment records are maintained by the National Archives and Records Administration (NARA), not the USPTO. According to MPEP 301.01:

"All assignment records from 1837 to April 30, 1957 for patents are now maintained and are open for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746 and at the Civilian Records Division of the National Archives at College Park, 8601 Adelphi Road, College Park, MD 20740-6001."

To access these records:

Visit the National Archives website at www.archives.gov for information on how to obtain records from these locations.
Be prepared to pay fees required by NARA for copies of records.
Note that assignment records from before 1837 are not available.

The MPEP advises: "Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA."

To learn more:

Question 3

What are the guidelines for status inquiries in patent applications?

Accepted Answer

The MPEP provides specific guidelines for status inquiries in patent applications:

Status inquiries are encouraged to be made via the Patent Application Information Retrieval (PAIR) system at https://www.uspto.gov/patents/apply/checking-application-status/check-filing-status-your-patent-application.
If PAIR is unavailable or the inquiry cannot be answered by PAIR, applicants can contact the Technology Center (TC) customer service center.
The MPEP states: Applicants and other individuals with limited Internet access may contact the TC customer service center at (571) 272-3900.
For reexamination proceedings, status inquiries should be directed to the Central Reexamination Unit (CRU) at (571) 272-7705.

It's important to follow these guidelines to ensure efficient processing of status inquiries.

To learn more:

Question 4

Where can I find information about the former 37 CFR 1.60 procedures?

Accepted Answer

For those interested in the historical procedures under former 37 CFR 1.60, 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 detailed information about the procedures that were in place before the rule change, which may be useful for historical reference or for understanding the processing of applications filed before December 1, 1997.

Question 5

Which patent offices participate in the Patent Prosecution Highway program?

Accepted Answer

The USPTO participates in several Patent Prosecution Highway (PPH) programs with other patent offices worldwide. According to MPEP 708.02(c):

"The USPTO participates in the Global PPH and IP5 PPH pilot programs, and also has PPH agreements with several intellectual property offices that are not yet included in the Global PPH."

For a comprehensive and up-to-date list of participating offices and specific program details, applicants should refer to the USPTO's official PPH website: www.uspto.gov/patents/init_events/pph/index.jsp.

To learn more:

Question 6

What forms should be used for powers of attorney in patent applications filed before September 16, 2012?

Accepted Answer

For patent applications filed before September 16, 2012, the USPTO recommends specific forms for powers of attorney. According to the MPEP:

Form PTO/SB/80 or PTO/SB/81 (available at www.uspto.gov/patent/patents-forms) should be used for powers of attorney in applications filed before September 16, 2012.

Additionally, for patents that issued from applications filed before September 16, 2012, Form PTO/SB/81A may be used. It's important to note that the USPTO no longer recommends or provides combined declaration and power of attorney forms. Practitioners should use separate forms for declarations and powers of attorney.

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Question 7

What are public use proceedings in patent law?

Accepted Answer

Public use proceedings were a process in patent law that allowed third parties to challenge a patent application based on alleged public use or sale of the invention before the filing date. However, as of September 16, 2012, this process has been discontinued.

According to the MPEP, Effective September 16, 2012, former 37 CFR. 1.292 authorizing petitions seeking institution of public use proceedings was removed from title 37. This change reflects a significant shift in patent examination procedures.

For historical information about public use proceedings, the MPEP directs readers to consult an older version: For information necessary regarding the former process, the August 2012 revision of the MPEP ( www.uspto.gov/web/offices/pac/mpep/old/mpep_E8R9.htm ) may be consulted.

To learn more:

37 CFR 1.292

Question 8

How can I request participation in the Patent Prosecution Highway program?

Accepted Answer

To request participation in the Patent Prosecution Highway (PPH) program, applicants need to follow specific procedures. The MPEP 708.02(c) provides guidance:

"See www.uspto.gov/patents/init_events/pph/index.jsp for details and forms to request participation in, and to petition to make an application special under, the PPH program."

Applicants should visit the USPTO's official PPH website to access the necessary forms and detailed instructions for requesting participation in the program. The process typically involves submitting a request form along with supporting documents that demonstrate eligibility based on a corresponding application in another participating office.

To learn more:

Patent Prosecution Highway request
PPH application process
PPH forms
PPH petition

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Can an applicant withdraw email communication authorization with the USPTO?

How can I access pre-1957 patent assignment records?

What are the guidelines for status inquiries in patent applications?

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USPTO’s Track One vs Patent Prosecution Highway

Where can I find information about the former 37 CFR 1.60 procedures?

Which patent offices participate in the Patent Prosecution Highway program?

What forms should be used for powers of attorney in patent applications filed before September 16, 2012?

What are public use proceedings in patent law?

How can I request participation in the Patent Prosecution Highway program?