Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Adjustments (1)
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
To learn more:
And Extensions (1)
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
To learn more:
MPEP 101-General (1)
The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:
- Obtain the caller’s full name, application number, and telephone number
- Verify the caller’s identity and authority to receive information
- Check Patent Data Portal or the application file to verify releasable information
- Return the call using a verified telephone number
Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.
MPEP 200 – Types and Status of Application; Benefit and Priority (1)
A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.
While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].
CPAs allow applicants to:
- Continue prosecution of a previously filed design application
- Make amendments or corrections, such as deleting a named inventor
- Potentially receive further examination without filing a new application
For more detailed information on CPAs, refer to MPEP § 201.06(d).
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
MPEP 201 – Types of Applications (1)
A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.
While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].
CPAs allow applicants to:
- Continue prosecution of a previously filed design application
- Make amendments or corrections, such as deleting a named inventor
- Potentially receive further examination without filing a new application
For more detailed information on CPAs, refer to MPEP § 201.06(d).
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (1)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
To learn more:
MPEP 2281 – Interviews In Ex Parte Reexamination Proceedings (1)
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
To learn more:
MPEP 2600 – Optional Inter Partes Reexamination (1)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
MPEP 2666.02 – Correction Of Patent Drawings (1)
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
MPEP 2700 – Patent Terms (1)
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
To learn more:
MPEP 2736 – Third – Party Papers (1)
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
To learn more:
MPEP 300 – Ownership and Assignment (3)
To correct assignee information on an issued patent, you must follow these steps:
- Submit a request for a certificate of correction under 37 CFR 1.323.
- Ensure that a request under 37 CFR 3.81(b) has been granted.
- Confirm that the assignment was submitted for recordation before the patent was issued.
According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”
The request should be directed to the Office of Petitions and include:
- The processing fee required by 37 CFR 1.17(i)
- A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
- A statement that the assignment was submitted for recordation before the patent was issued
- A request for a certificate of correction under 37 CFR 1.323 with the associated fee
For more information on assignee information, visit: assignee information.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on Patent correction, visit: Patent correction.
For more information on USPTO procedures, visit: USPTO procedures.
An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:
- Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
- 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.
As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.
For more information on USPTO procedures, visit: USPTO procedures.
While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:
- Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
- Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
- The former name (in the space for the party conveying the interest)
- The new name (in the space for the party receiving the interest)
- A description of the interest conveyed as “Name Change”
- Identification of the affected patents or applications
- Submit the document and cover sheet to the USPTO for recordation, along with any required fee
- The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)
As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.
It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.
MPEP 302 – Recording of Assignment Documents (1)
While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:
- Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
- Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
- The former name (in the space for the party conveying the interest)
- The new name (in the space for the party receiving the interest)
- A description of the interest conveyed as “Name Change”
- Identification of the affected patents or applications
- Submit the document and cover sheet to the USPTO for recordation, along with any required fee
- The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)
As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.
It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.
MPEP 307 – Issue to Non – Applicant Assignee (1)
To correct assignee information on an issued patent, you must follow these steps:
- Submit a request for a certificate of correction under 37 CFR 1.323.
- Ensure that a request under 37 CFR 3.81(b) has been granted.
- Confirm that the assignment was submitted for recordation before the patent was issued.
According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”
The request should be directed to the Office of Petitions and include:
- The processing fee required by 37 CFR 1.17(i)
- A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
- A statement that the assignment was submitted for recordation before the patent was issued
- A request for a certificate of correction under 37 CFR 1.323 with the associated fee
For more information on assignee information, visit: assignee information.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on Patent correction, visit: Patent correction.
For more information on USPTO procedures, visit: USPTO procedures.
MPEP 400 – Representative of Applicant or Owner (1)
When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:
“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”
This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.
To learn more:
MPEP 500 – Receipt and Handling of Mail and Papers (4)
Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’
The consequences of such actions can be severe, potentially including:
- Invalidation of the patent
- Criminal charges for fraud
- Disciplinary action against registered patent practitioners
It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.
To learn more:
Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:
- You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
- This 3-month period cannot be extended
According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”
To learn more:
To learn more:
If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- Require compliance within a non-extendable one-month period
The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.
To learn more:
For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:
“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”
This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.
To learn more:
Patent Law (15)
To correct assignee information on an issued patent, you must follow these steps:
- Submit a request for a certificate of correction under 37 CFR 1.323.
- Ensure that a request under 37 CFR 3.81(b) has been granted.
- Confirm that the assignment was submitted for recordation before the patent was issued.
According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”
The request should be directed to the Office of Petitions and include:
- The processing fee required by 37 CFR 1.17(i)
- A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
- A statement that the assignment was submitted for recordation before the patent was issued
- A request for a certificate of correction under 37 CFR 1.323 with the associated fee
For more information on assignee information, visit: assignee information.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on Patent correction, visit: Patent correction.
For more information on USPTO procedures, visit: USPTO procedures.
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
To learn more:
A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.
While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].
CPAs allow applicants to:
- Continue prosecution of a previously filed design application
- Make amendments or corrections, such as deleting a named inventor
- Potentially receive further examination without filing a new application
For more detailed information on CPAs, refer to MPEP § 201.06(d).
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:
- Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
- 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.
As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.
For more information on USPTO procedures, visit: USPTO procedures.
The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:
- Obtain the caller’s full name, application number, and telephone number
- Verify the caller’s identity and authority to receive information
- Check Patent Data Portal or the application file to verify releasable information
- Return the call using a verified telephone number
Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.
Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’
The consequences of such actions can be severe, potentially including:
- Invalidation of the patent
- Criminal charges for fraud
- Disciplinary action against registered patent practitioners
It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.
To learn more:
While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:
- Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
- Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
- The former name (in the space for the party conveying the interest)
- The new name (in the space for the party receiving the interest)
- A description of the interest conveyed as “Name Change”
- Identification of the affected patents or applications
- Submit the document and cover sheet to the USPTO for recordation, along with any required fee
- The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)
As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.
It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.
How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
To learn more:
Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:
- You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
- This 3-month period cannot be extended
According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”
To learn more:
To learn more:
If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
To learn more:
When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
To learn more:
When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:
“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”
This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.
To learn more:
If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- Require compliance within a non-extendable one-month period
The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.
To learn more:
For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:
“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”
This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.
To learn more:
No, the USPTO does not return annotated sheets submitted for patent drawing corrections. According to MPEP 608.02(v), “Annotated sheets filed by an applicant and used for correction of the drawing will not be returned.” This policy ensures that the USPTO maintains a complete record of all proposed changes to the patent drawings throughout the examination process.
To learn more:
Patent Procedure (15)
To correct assignee information on an issued patent, you must follow these steps:
- Submit a request for a certificate of correction under 37 CFR 1.323.
- Ensure that a request under 37 CFR 3.81(b) has been granted.
- Confirm that the assignment was submitted for recordation before the patent was issued.
According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”
The request should be directed to the Office of Petitions and include:
- The processing fee required by 37 CFR 1.17(i)
- A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
- A statement that the assignment was submitted for recordation before the patent was issued
- A request for a certificate of correction under 37 CFR 1.323 with the associated fee
For more information on assignee information, visit: assignee information.
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on Patent correction, visit: Patent correction.
For more information on USPTO procedures, visit: USPTO procedures.
Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:
- Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
- If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
- Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.
The MPEP states: “If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement.“
These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.
To learn more:
A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.
While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].
CPAs allow applicants to:
- Continue prosecution of a previously filed design application
- Make amendments or corrections, such as deleting a named inventor
- Potentially receive further examination without filing a new application
For more detailed information on CPAs, refer to MPEP § 201.06(d).
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO procedures, visit: USPTO procedures.
An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:
- Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
- 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.
As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.
For more information on USPTO procedures, visit: USPTO procedures.
The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:
- Obtain the caller’s full name, application number, and telephone number
- Verify the caller’s identity and authority to receive information
- Check Patent Data Portal or the application file to verify releasable information
- Return the call using a verified telephone number
Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.
Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’
The consequences of such actions can be severe, potentially including:
- Invalidation of the patent
- Criminal charges for fraud
- Disciplinary action against registered patent practitioners
It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.
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While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:
- Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
- Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
- The former name (in the space for the party conveying the interest)
- The new name (in the space for the party receiving the interest)
- A description of the interest conveyed as “Name Change”
- Identification of the affected patents or applications
- Submit the document and cover sheet to the USPTO for recordation, along with any required fee
- The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)
As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.
It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.
How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
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Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:
- You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
- This 3-month period cannot be extended
According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”
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If a third party submits a petition or any document concerning patent term adjustment, the United States Patent and Trademark Office (USPTO) will not consider it. According to MPEP 2736:
“Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.”
This means that the USPTO will either return the submission to the third party or dispose of it as they see fit. The Office is not obligated to process or review these submissions in any way.
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When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:
- New sheets must be submitted for each drawing sheet that is changed or amended.
- If a new drawing sheet contains multiple figures, each figure must be properly identified according to 37 CFR 1.530(d)(3):
“Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
It’s important to note that:
- Changes cannot be made on the original patent drawings.
- It is not sufficient to generally indicate that the entire sheet is amended (e.g., by placing “Amended” in the header of the drawing sheet).
- Each individual figure that has been amended must be clearly marked as “Amended.”
- New figures must be identified as “New.”
- Canceled figures must be surrounded by brackets and labeled “Canceled.”
After proper identification and labeling, the new sheets of drawings should be entered into the reexamination file.
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When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:
“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”
This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.
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If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- Require compliance within a non-extendable one-month period
The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.
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For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:
“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”
This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.
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No, the USPTO does not return annotated sheets submitted for patent drawing corrections. According to MPEP 608.02(v), “Annotated sheets filed by an applicant and used for correction of the drawing will not be returned.” This policy ensures that the USPTO maintains a complete record of all proposed changes to the patent drawings throughout the examination process.
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