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.

How to Call your Examiner

Calling your Examiner is no big deal, but should be done judiciously.

Before you call

If you’re calling for your position in the queue, make sure you have the application number in front of you.

If you’re calling about an Office Action, read through it first. Prepare an answer for each rejection or suggestion provided by the Examiner, and jot down any questions you have. The Office Action will include the application number on every page.

Calling

After a greeting, state the application number of your application and briefly describe the purpose of the call. If you’re calling about an Office Action, steer the conversation toward resolving the issues pointed out in the Action.

If the Examiner suggests an Examiner interview, make sure to give yourself some time to prepare. You should come up with a strategy, including arguments to overcome rejections and acceptable compromises should you be unable to overcome certain rejections. You should also email or fax the Examiner an itemized agenda ahead of time. The best-case outcome of an Examiner interview is an Examiner’s Amendment, in which the Examiner herself makes agreed-upon changes to overcome rejections, and proceeds to allowance.

Please note that in order to communicate with the Examiner by email, you must include a sentence in your email that authorizes email communication and assumes the inherent security risks associated with email, e.g.:

I hereby authorize the use of email correspondence with and from you for App No. [APP NO.].  I understand the security risks involved with email correspondence and choose to proceed anyway.

Confidentiality and your Patent Practitioner

When you’re pursuing your inventions, confidentiality should be one of your top concerns. If you’re keeping an invention a trade secret, you must maintain confidentiality or else risk losing trade secret protection. Even if you’re patenting the invention, however, a breach of confidentiality could be damning. It could start the one-year disclosure clock ticking, or worse, could lead to someone else filing a patent on your invention before you do.
Patent practitioners understand and honor your need for confidentiality, and so does the USPTO. You will be happy to know that there are several layers of protection when dealing with your patent practitioner.

First, all patent practitioners are bound by the Code of Federal Regulations to maintain secrecy with current or future clients. The rule lists several exceptions, standard to most confidentiality agreements such as those between doctors and patients. They include disclosures “necessary to prevent reasonably certain death or bodily harm,” or “compliance with court orders.” However, those are all extreme, and rare, circumstances. If a patent practitioner breaches the confidentiality rules and cannot point to a permitted exception, he may lose his license to practice.

Individual practitioners usually go a step further to assure you that your information is safe. Confidentiality is hard-wired into most engagement letters, including ours here at Intellent Law. Thus, your confidentiality is explicitly protected by contract, permitting you to sue for damages if the contract is breached.

For further assurance, you could ask your patent practitioner to sign a Non-Disclosure Agreement (NDA). An NDA is another type of contract, so the protections in the NDA might end up duplicating the provisions in the engagement letter.

Once your confidentiality is protected by the rules and agreements described above, it may pay to share information. For utility applications, it is paramount that you disclose all possible embodiments of your invention to guarantee the broadest possible detailed description, and improve your chances of getting useful claims allowed. For design applications, giving your patent practitioner access to CAD files makes drafting design patent applications exponentially faster, and helps assure precise illustrations.

Developing a trusting relationship with your patent practitioner will help speed along prosecution. Your patent agent or patent attorney is not out to steal your idea and disseminate it to the public. If he did, he would lose his license to practice, and you could also sue him.

Where’s my Patent Certificate?

You’ve come to an agreement with your Examiner. You’ve gotten your Notice of Allowance, paid the issue fee, and received an Issue Notification. So, where’s your official patent certificate with the shiny USPTO seal?

Short US Patent - exampleanswer: as of the Issue Date, it’s in the mail.

Long answer: On the issue date provided in your Issue Notification, it will be mailed to the representative of whoever owns the intellectual property.

If a patent agent or attorney has filed a Power of Attorney for this patent application, he or she is the “attorney of record.” The certificate will be mailed to the attorney of record, who will presumably forward it to you.

If there is no attorney of record, then the certificate will be mailed to whoever owns the intellectual property in question. This means that if there is an assignee it will be sent to the address of the assignee, which was given in the filed Assignment or in the Application Data Sheet (ADS). If there is no assignee, the granted patent will be sent to you, the inventor, to the address you gave in the ADS.

You can order extra certified copies from the USPTO for $25 per copy.

The USPTO’s summary of issue procedure:

“When the required fees are paid, the patent issues as soon as possible after the date of payment, dependent upon the volume of printing on hand. The patent grant then is delivered or mailed on the day of its grant, or as soon thereafter as possible, to the inventor’s attorney or agent if there is one of record, otherwise directly to the inventor. On the date of the grant, the patent file becomes open to the public for applications not opened earlier by publication of the application.”

When to Call your Examiner

Inventors and attorneys of record can call Examiners with questions about pending applications. You can call the Examiner at any point in the examination process, and calls do not incur extra USPTO fees. I can personally attest that Examiners make for pleasant conversation, and that there is nothing scary or complicated about Examiner phone calls. However, for maximally efficient examination it’s best to restrict calls to ones that will provide valuable information.

Before a rejection, you could call to gauge your position in the queue. Applications take a long time to process; you might not hear from the USPTO for two years after you submit your application. For a rough estimate, you or your attorney of record can also check Private Pair for the USPTO’s prediction of your first Office Action. You also might want to know your actual position in the queue if someone is infringing on your idea, and you’re wondering whether to file for accelerated examination. In such cases, calling can help you plan or budget.

After a rejection Office Action, you could call to improve your chances of submitting a response that leads to an allowance. If you’re lucky and it’s a clear Office Action with directions on what to fix, you would call to discuss the Office Action and confirm that following those directions will get you an allowance. If it’s a particularly complex Office Action, you would call to set up an Examiner’s Interview to clarify issues brought up in the Office Action, and potentially secure an Examiner’s Amendment.

My clients often ask me to call the Examiner to follow up on pending applications, hoping to get projected dates for USPTO responses. However, Examiners have incredibly crowded dockets and are unable to predict with such accuracy when they will issue your next Office Action. In fact, disturbing the Examiner with multiple follow-up calls may delay examination. Also, if you have filed or plan to file multiple patent applications within the same field, you may well get the same Examiner for multiple applications. Antagonizing the examiner could not possibly smooth your way to allowances.

Defining “Inventor”, “Assignee”, and “Attorney of Record”

Published patent applications list up to three categories of individuals involved in prosecution: “inventor,” “assignee,” and “attorney of record.” Office Actions refer to the “applicant.” What does each term mean, and what rights are attached to each category?

Applicant: Whoever is assigned the rights to the patent is called the “applicant.” This could be the original inventor, or it could be the assignee.

Inventor: Unless otherwise determined by a contract or a sale, the rights to the patent belong to the inventor(s). All inventors included in the Application Data Sheet will be listed on a published patent application.

Assignee: An assignee is an individual or a company that has gained rights and title to the invention. The assignee, not the inventor, owns the intellectual property. If the assignee is already determined when you file the application, the Application Data Sheet will include assignment information. If the rights to the patent are assigned after filing, you must file an Assignment with the USPTO.

Attorney of Record: An attorney or agent of record receives no rights to the patent, but is authorized to act on behalf of the applicant. This means that the attorney/agent of record can receive correspondence, interview the patent Examiner, and file applications and responses to Office Actions on behalf of the applicant. You must file a Power of Attorney whenever you want a patent attorney/agent to act on your behalf as your representative to the USPTO.

All USPTO correspondence, including the Patent Certificate, is mailed to the attorney of record if a Power of Attorney was filed. If there is no attorney of record, the correspondence is mailed to the assignee. If there is no assignee, it is mailed to the inventor.

Finally, let’s take a look at an issued patent.  As you can see, the inventor and the assignee are featured prominently right below the title. The patent professionals are listed further down – the attorney of record right under the Examiners.

Patent Cover Sheet