Question 1

What are the requirements for submitting an IDS electronically?

Accepted Answer

Electronic submission of an Information Disclosure Statement (IDS) is limited to specific methods and formats. The MPEP states:

'Electronic means or medium for filing IDSs are not permitted except for: (A) IDSs electronically submitted using the USPTO patent electronic filing system (see MPEP § 609.07); or (B) copies of large tables, computer program listings, and sequence listings submitted as a PDF file and a "Sequence Listing XML" submitted as an XML file on a read-only optical disc in compliance with 37 CFR 1.52(e)(2) and (3) which are cited in a paper IDS.' (MPEP 609.04(a))

Key points for electronic IDS submission:

Use the USPTO patent electronic filing system for general IDS submissions
Large tables, computer program listings, and sequence listings can be submitted as PDF files
"Sequence Listing XML" must be submitted as an XML file on a read-only optical disc
A read-only optical disc cannot be used to submit an IDS listing or copies of documents (except for the items mentioned above)
Published information, such as software output or videos, must be reduced to writing (e.g., screen shots, transcripts)

It's important to follow these guidelines to ensure proper processing of your IDS by the USPTO.

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Question 2

What technical information can a patent examiner request during examination?

Accepted Answer

What technical information can a patent examiner request during examination?

During the examination process, a patent examiner can request various types of technical information to better understand the invention. According to MPEP 704.11, this may include:

Technical explanations or theories of operation
Specific technical characteristics of the invention
Experimental data or test results
Computer programs or software code, if relevant

The MPEP specifically mentions:

"Computer programs described in the application but not submitted (e.g., computer programs referred to in the specification but not provided)."

Examiners may request this information to fully assess the patentability of the invention, including its novelty, non-obviousness, and enablement.

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Question 3

How can I satisfy the requirement for a certified copy of a foreign application in a continuing application?

Accepted Answer

In a continuing application, you can satisfy the requirement for a certified copy of a foreign application without actually filing the certified copy again. According to 37 CFR 1.55(h):

The requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This means that if you have already filed a certified copy in a parent application, you can simply identify that application as containing the certified copy when filing your continuing application. This approach can save time and reduce the paperwork required for perfecting priority claims in continuing applications.

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certified copy
foreign application
continuing application
37 CFR 1.55

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37 CFR 1.55

Question 4

What is the time limit for submitting a certified copy of a foreign application for priority claim?

Accepted Answer

What is the time limit for submitting a certified copy of a foreign application for priority claim?

The time limit for submitting a certified copy of a foreign application for a priority claim depends on the specific circumstances of your application. According to MPEP 213.04:

The time period for filing a certified copy of the foreign application in the United States application (or written statement) is no later than the date the issue fee is paid.

However, there are some exceptions and additional considerations:

If you file the priority claim within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, you may not need to file a certified copy immediately.
If the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO, the exchange may satisfy the certified copy requirement.
In some cases, an interim copy of the foreign application or a statement that the copy was previously filed may be sufficient.

Note: While it's possible to file the certified copy after paying the issue fee, it requires an additional processing fee and must be done before the patent is granted. To avoid complications and extra fees, it's best to submit the certified copy as early as possible during the application process.

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