Patent Law FAQ

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. 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
3. 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.

Examiners Must Designate Office Interviews for Patents in Ex Parte Reexamination MPEP 2281 Required
Interviews Not Allowed Before First Official Action MPEP 2281 Informative
Examination Interviews Not Permitted for Requesters MPEP 2281 Informative
Interview Reason Statement Required for Favorable Action MPEP 2281 Required
Interviews Permitted in Ex Parte Reexamination Proceedings MPEP 2281 Permitted

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. 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
3. 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.

Examiners Must Designate Office Interviews for Patents in Ex Parte Reexamination MPEP 2281 Required
Interviews Not Allowed Before First Official Action MPEP 2281 Informative
Examination Interviews Not Permitted for Requesters MPEP 2281 Informative
Interview Reason Statement Required for Favorable Action MPEP 2281 Required
Interviews Permitted in Ex Parte Reexamination Proceedings MPEP 2281 Permitted

An attorney can withdraw from representation in a patent case by following these steps:

• File a request to withdraw in accordance with 37 CFR 1.36.
• The request should include the correspondence address of the applicant or patent owner.
• If the applicant/owner is represented by a new attorney, include the new attorney’s registration number.
• The Office of Enrollment and Discipline may require the practitioner to notify the client of the withdrawal.

As stated in MPEP 2560: “The withdrawal of an attorney may not be used to delay proceedings in an application.“

Revocation and Withdrawal of Attorney After Issuance Not Processed MPEP 2560 Permitted
Assignment Does Not Revoke Power of Attorney MPEP 2560 Recommended

An attorney can withdraw from representation in a patent case by following these steps:

• File a request to withdraw in accordance with 37 CFR 1.36.
• The request should include the correspondence address of the applicant or patent owner.
• If the applicant/owner is represented by a new attorney, include the new attorney’s registration number.
• The Office of Enrollment and Discipline may require the practitioner to notify the client of the withdrawal.

As stated in MPEP 2560: “The withdrawal of an attorney may not be used to delay proceedings in an application.“

Revocation and Withdrawal of Attorney After Issuance Not Processed MPEP 2560 Permitted
Assignment Does Not Revoke Power of Attorney MPEP 2560 Recommended

When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:

1. New sheets must be submitted for each drawing sheet that is changed or amended.
2. 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.

Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2666.02 Informative
No Inter Partes Reexamination After September 16, 2012 MPEP 2666.02 Informative

While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination:

“…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.”

The key difference is that ex parte reexamination involves only the patent owner and the USPTO, while inter partes reexamination (which is no longer available but may still be relevant for some patents) allowed third-party participation throughout the process. However, for the purposes of processing a reexamination of a reexamination, these distinctions do not affect the procedure.

Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2695 Informative
Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2695 Informative

When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:

1. New sheets must be submitted for each drawing sheet that is changed or amended.
2. 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.

Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2666.02 Informative
No Inter Partes Reexamination After September 16, 2012 MPEP 2666.02 Informative

While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination:

“…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.”

The key difference is that ex parte reexamination involves only the patent owner and the USPTO, while inter partes reexamination (which is no longer available but may still be relevant for some patents) allowed third-party participation throughout the process. However, for the purposes of processing a reexamination of a reexamination, these distinctions do not affect the procedure.

Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2695 Informative
Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2695 Informative

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.

If you discover that another party has improperly recorded an assignment or name change against your application or patent, you can correct this error by following the procedure outlined in MPEP 323.01(c):

1. First, try to contact the party who recorded the erroneous information and request that they record corrective papers.
2. If unsuccessful, submit the following to the Assignment Services Division:
   • A completed cover sheet identifying the affected application or patent
   • An affidavit or declaration:
     • Identifying yourself as the correct owner
     • Stating that the previously recorded document contained erroneous information
     • Providing the reel and frame number of the incorrectly recorded document
   • The required fee for each application or patent to be corrected

The MPEP advises: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.

On the corrected cover sheet, check the ‘Other’ box for ‘Nature of Conveyance’ and indicate that you’re correcting an error in a previously recorded document.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.

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.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.”

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:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. 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.

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.

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. 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
3. 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.

Examiners Must Designate Office Interviews for Patents in Ex Parte Reexamination MPEP 2281 Required
Interviews Not Allowed Before First Official Action MPEP 2281 Informative
Examination Interviews Not Permitted for Requesters MPEP 2281 Informative
Interview Reason Statement Required for Favorable Action MPEP 2281 Required
Interviews Permitted in Ex Parte Reexamination Proceedings MPEP 2281 Permitted

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.

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.

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.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.”

When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:

1. New sheets must be submitted for each drawing sheet that is changed or amended.
2. 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.

Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2666.02 Informative
No Inter Partes Reexamination After September 16, 2012 MPEP 2666.02 Informative

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.

An attorney can withdraw from representation in a patent case by following these steps:

• File a request to withdraw in accordance with 37 CFR 1.36.
• The request should include the correspondence address of the applicant or patent owner.
• If the applicant/owner is represented by a new attorney, include the new attorney’s registration number.
• The Office of Enrollment and Discipline may require the practitioner to notify the client of the withdrawal.

As stated in MPEP 2560: “The withdrawal of an attorney may not be used to delay proceedings in an application.“

Revocation and Withdrawal of Attorney After Issuance Not Processed MPEP 2560 Permitted
Assignment Does Not Revoke Power of Attorney MPEP 2560 Recommended

How can I correct information in an Application Data Sheet (ADS) after submission?

To correct information in an Application Data Sheet (ADS) after submission, you must follow specific procedures outlined in the MPEP:

“If an ADS has been previously submitted, the ADS provided with a continuing application, reissue application, or reexamination proceeding should be marked to show the changes from the previously submitted ADS.” (MPEP 601.05(a))

Here’s how to make corrections:

• Submit a new ADS with clearly marked changes.
• Use strikethrough for deletions and underlining for insertions.
• Include all sections of the ADS, not just those being changed.
• For inventor information changes, comply with 37 CFR 1.48.
• For benefit claims corrections, see 37 CFR 1.78.

Remember, some changes may require additional forms or fees. Always check the current USPTO guidelines for the most up-to-date requirements.

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:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. 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.

If you discover that another party has improperly recorded an assignment or name change against your application or patent, you can correct this error by following the procedure outlined in MPEP 323.01(c):

1. First, try to contact the party who recorded the erroneous information and request that they record corrective papers.
2. If unsuccessful, submit the following to the Assignment Services Division:
   • A completed cover sheet identifying the affected application or patent
   • An affidavit or declaration:
     • Identifying yourself as the correct owner
     • Stating that the previously recorded document contained erroneous information
     • Providing the reel and frame number of the incorrectly recorded document
   • The required fee for each application or patent to be corrected

The MPEP advises: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.

On the corrected cover sheet, check the ‘Other’ box for ‘Nature of Conveyance’ and indicate that you’re correcting an error in a previously recorded document.

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.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.

While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination:

“…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.”

The key difference is that ex parte reexamination involves only the patent owner and the USPTO, while inter partes reexamination (which is no longer available but may still be relevant for some patents) allowed third-party participation throughout the process. However, for the purposes of processing a reexamination of a reexamination, these distinctions do not affect the procedure.

Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2695 Informative
Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2695 Informative

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

1. Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
2. 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
3. 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.

Examiners Must Designate Office Interviews for Patents in Ex Parte Reexamination MPEP 2281 Required
Interviews Not Allowed Before First Official Action MPEP 2281 Informative
Examination Interviews Not Permitted for Requesters MPEP 2281 Informative
Interview Reason Statement Required for Favorable Action MPEP 2281 Required
Interviews Permitted in Ex Parte Reexamination Proceedings MPEP 2281 Permitted

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.

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.

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.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.”

When submitting new drawing sheets in a reexamination proceeding, there are specific requirements that must be followed:

1. New sheets must be submitted for each drawing sheet that is changed or amended.
2. 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.

Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2666.02 Informative
No Inter Partes Reexamination After September 16, 2012 MPEP 2666.02 Informative

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.

An attorney can withdraw from representation in a patent case by following these steps:

• File a request to withdraw in accordance with 37 CFR 1.36.
• The request should include the correspondence address of the applicant or patent owner.
• If the applicant/owner is represented by a new attorney, include the new attorney’s registration number.
• The Office of Enrollment and Discipline may require the practitioner to notify the client of the withdrawal.

As stated in MPEP 2560: “The withdrawal of an attorney may not be used to delay proceedings in an application.“

Revocation and Withdrawal of Attorney After Issuance Not Processed MPEP 2560 Permitted
Assignment Does Not Revoke Power of Attorney MPEP 2560 Recommended

How can I correct information in an Application Data Sheet (ADS) after submission?

To correct information in an Application Data Sheet (ADS) after submission, you must follow specific procedures outlined in the MPEP:

“If an ADS has been previously submitted, the ADS provided with a continuing application, reissue application, or reexamination proceeding should be marked to show the changes from the previously submitted ADS.” (MPEP 601.05(a))

Here’s how to make corrections:

• Submit a new ADS with clearly marked changes.
• Use strikethrough for deletions and underlining for insertions.
• Include all sections of the ADS, not just those being changed.
• For inventor information changes, comply with 37 CFR 1.48.
• For benefit claims corrections, see 37 CFR 1.78.

Remember, some changes may require additional forms or fees. Always check the current USPTO guidelines for the most up-to-date requirements.

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:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. 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.

If you discover that another party has improperly recorded an assignment or name change against your application or patent, you can correct this error by following the procedure outlined in MPEP 323.01(c):

1. First, try to contact the party who recorded the erroneous information and request that they record corrective papers.
2. If unsuccessful, submit the following to the Assignment Services Division:
   • A completed cover sheet identifying the affected application or patent
   • An affidavit or declaration:
     • Identifying yourself as the correct owner
     • Stating that the previously recorded document contained erroneous information
     • Providing the reel and frame number of the incorrectly recorded document
   • The required fee for each application or patent to be corrected

The MPEP advises: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.

On the corrected cover sheet, check the ‘Other’ box for ‘Nature of Conveyance’ and indicate that you’re correcting an error in a previously recorded document.

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.

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.

While MPEP § 2695 doesn’t directly define the difference between ex parte and inter partes reexamination, it mentions both types in the context of reexamination of a reexamination:

“…regardless of whether the reexamination certificate was issued for an ex parte reexamination or an inter partes reexamination, and regardless of whether the pending reexamination proceeding is an ex parte reexamination or an inter partes reexamination.”

The key difference is that ex parte reexamination involves only the patent owner and the USPTO, while inter partes reexamination (which is no longer available but may still be relevant for some patents) allowed third-party participation throughout the process. However, for the purposes of processing a reexamination of a reexamination, these distinctions do not affect the procedure.

Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2695 Informative
Inter Partes Reexamination Not Acceptable After September 16, 2012 MPEP 2695 Informative