Preliminary Amendments

Have you ever pressed “Send” on an email, and then a few horrible seconds later realized you left out a phone number or gruesomely typoed the recipient’s name?

Well, doing it on USPTO’s EFS-Web while submitting an application feels way worse — there’s the hard-line rule about “no new matter” in amended applications, right?

Right — but with one exception. The USPTO realizes that typos and mistakes happen. If you catch the mistake immediately, you can file a preliminary amendment. If made on the day of filing before midnight EST, preliminary amendments are considered part of the original disclosure. Thus, any “new” (or corrected) material is not considered “new matter.”

To file a preliminary amendment, you need a cover sheet and a (properly) amended specification. Make sure you get the formats correct!

Cover Sheet
The cover sheet should include specific application information. It must be labeled “preliminary amendment” when you attach it in EFS-Web.

preliminary amendment cover sheetAmended Specification
Include your changes, titled “Amendments to the Specification.” Only include the paragraphs which have changes. Deletions must be shown as strikeouts and insertions are shown as underlined text.

For example:

[086] The brilligslithy toves gyre and gimble throughout the tulgey woodin the wabe. The weather was horrible.All mimsy were the borogoves, and the mome raths outgrabe.

File the amended specification as a “miscellaneous incoming letter” in EFS-Web.

Reviving an abandoned patent application

Once you file a patent application and start receiving Office actions, you’ve got to stay on your toes. Every Office action comes with a time limit, and if you leave it too long, you might find yourself in a nightmare — your idea disclosed, but now impossible to patent.

Patent applications go abandoned if you are not responsive when you receive an Office action. When you receive an Office action, you must respond within 3 months, although you can extend the due date by up to 3 months.  However, if you don’t respond by 6 months after the mailing date, the USPTO considers your patent application abandoned. This means you cannot pursue the patent any longer. However, if your application got published during prosecution, your idea has entered the public domain.

In some cases, all is not yet lost. You can revive an abandoned patent application – but only if the delay in responding was unintentional or unavoidable. If the delay was unintentional, you must explain the circumstances and pay the petition fee ($1700 large entity, $850 small entity, $850 micro entity) in addition to any other fees that you need to pay, such as extension of time fees or maintenance fees.  

If the delay was unavoidable, you only need to explain the circumstance. An unavoidable delay is very difficult to prove and is only accepted in very extreme situations such as the death of an assistant responsible for payment of maintenance fees. 

Unintentional delays are more common, and such petitions are more successful. What does unintentional mean with respect to abandonment of a patent or patent application? This is probably best defined by what is NOT unintentional. The USPTO outlines 5 scenarios in which a delay is not unintentional:

  • (A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action;
  • (B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent;
  • (C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent;
  • (D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or
  • (E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses.

You must make your explanations for unintentional delays in good faith; fraudulent explanations carry a very high risk of liability. If you do eventually get the patent granted, and the patent ends up contested in court, the whole case may hinge on whether the delay was actually unintentional.

So what’s the takeaway here? If you don’t have a patent practitioner managing your IP portfolio, stay on top of your Office action and maintenance fee due dates! Make a calendar reminder or something. While you could potentially get an application revived by claiming unintentional abandonment, that sort of exposure is not something you want to risk.

Finding your First Action Prediction

Within a few weeks of filing a nonprovisional utility or design patent application, the USPTO issues a First Action Prediction.  The prediction provides the approximate number of months until a first Office Action will be submitted for your application.  This number is actually a pretty accurate calculation of the time it would take for the Examiner to get through his current backlog to before he gets to your patent application.

If your application has an attorney of record, only the attorney of record can access Private Pair; you’ll have to ask him or her to check the Prediction for you.

If your application has no attorney of record, you can access Private Pair to check the Prediction. Log in, search for your application using your application number, and find the First Action Prediction tab circled below.

First_Action_Prediction_Tab

The tab leads to a status page, which shows the months left until the first Office Action.

First_Action_Prediction

If you need to know where your application is in the Examiner’s queue, or if the predicted number of months has stayed the same for a while, you could call the Examiner.