Tag Archives: USPTO

New Interview Practice Video: USPTO AIR

Watch the USPTO’s Interview Practice short video for a brief introduction to the USPTO Automated Interview Request (AIR) tool and learn about our interview specialists, who are subject matter experts in interview practices and policies.

AIR is a convenient online form for submitting a request for interviews. After the form is submitted, an examiner will email you to confirm your request within two business days.

For more information visit the USPTO Interview Practice web page.

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Successful Transition to the Cooperative Patent Classification System

Cooperation between the USA and Europe is a good thing! KTA

Blog by USPTO Commissioner for Patents Peggy Focarino

On January 1, 2015, the USPTO successfully transitioned to the Cooperative Patent Classification (CPC) system from the United States Patent Classification (USPC) system. The CPC is a collaborative venture between the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO), designed to develop a common, internationally compatible classification system for technical documents used in the patent granting process. It offers a more robust and agile classification system for both offices’ user communities and enables more technical documents to be classified, because the USPTO and EPO are both entering documents into the system. Since its launch, the USPTO has successfully issued about 47,000 U.S. patent documents under the CPC.

As we transitioned to the CPC, we made sure to keep patent applicants and owners updated on the transition process. Leading up to the changeover, throughout 2013 and 2014, numerous bilateral CPC events were held with external stakeholders, providing notice that the USPC would become a static document collection for utility patents after December 2014. Stakeholders may continue to see a limited number of U.S. patent grants still issuing with USPC symbols due to allowed applications already in the publication cycle, but the USPTO will no longer actively assign USPC symbols to issued utility patents. However, plant and design patents are not covered in the CPC, so they will continue to be published with USPC symbols.

To facilitate searching for documents, the USPTO’s existing tools have been modified to provide all users the ability to search documents classified in the CPC, the USPC (now a static document collection), and the International Patent Classification (IPC) systems. USPTO examiners are now required to classify and search using the CPC, and we want our user community to understand that the CPC will be continuously updated through bilateral revision and reclassification projects between the USPTO and the EPO. We are also working on creating a bilateral examiner-focused collaborative environment for discussions, work-sharing initiatives and training opportunities.

As a leader in the global patent community, the USPTO is dedicated to providing a quality classification system for employees and stakeholders, and one that is compatible with the international patent community. Most importantly, we will ensure that the quality of the classification system remains strong and agile.

The CPC provides a more comprehensive search result set that includes national documents from China and Korea,  as well as several other countries that are classifying their national documents into the CPC; documents that were not previously available for viewing or retrieval under the USPC. We intend to keep the quality of the CPC documents at a high level by helping more countries classify their national documents into the CPC, and we will continue to work with the EPO to perform an ongoing number of CPC revision projects.

We welcome your thoughts on the transition from the USPC to the CPC. More information, including frequently asked questions, is available on the CPC page of our website. Please send any questions or comments to CPC@uspto.gov (link sends e-mail).

What we need next is  CPC and China cooperative! KTA

PATENTS IN THEORY AND PRACTICE: IMPLICATIONS FOR REFORM —

Deputy Director Michelle K. Lee at the Technology Policy Institute

Patent reform is high on the agenda for Congress. Proponents of reform claim the current system produces excessive litigation, particularly on the part of “patent assertion entities,” imposing costs on entrepreneurs and others and deterring innovation. Those on the other side suggest that the litigation explosion is overstated and that patent reform efforts will weaken intellectual property protections to the detriment of innovation.

Deputy Director Michelle K. Lee joined The Technology Policy Institute for a half-day conference “Patents in Theory and Practice: Implications for Reform” on February 11 to explore the evidence for reform from both sides of the issue.

Learn more by viewing the agenda or watching the fireside chat.

The Patents of My Career

 


Patent drawing from Patent 5,996,127 of a Wearable Device for Feeding and Observing Birds and Other Flying Animals.

Patents Pick-5Every patent examiner has a list of patents that hold special meaning to him or her, from the first application they examined to the one for a groundbreaking new technology.

As I get ready to retire from the United States Patent and Trademark Office (USPTO) after 24-plus years, I have been looking back at the many people who have been part of my life during my career. It has been a privilege to work with a number of great examiners, managers, attorneys, agents, and so many wonderful and inspiring inventors. I have seen many interesting and not-so-interesting inventions and patents. These five have special meaning to me.

Note: This article is part of an ongoing series detailing some of the Inventors Eye staff’s favorite patents. For each article, the writer selects five patents under a given theme. This list is from Senior Advisor John Calvert. You can read more about John’s career helping independent inventors in our April Spark of Genius .

U.S. Patent No. 4,951,357
Stop Motion Apparatus for a Roving Drafting Device of a Textile Machine

My career as an examiner started in 1990. After two weeks of training, I began examining real applications in the technical area of my college education and work experience: textiles and knitting technology. The very first application I sent a Notice of Allowance for was a stop motion device that helps eliminate excessive fiber waste when a particular part of the machine fails to have the proper amount of fiber moving through the device. While other stop motion devices were previously known, I found that the improvement in this device was new and nonobvious. And so it began.

Fabric cont

 

U.S. Patent No5,515,585
Process for Forming Needled Fibrous Structures Using Determined Transport Depth

When I first read this application, I knew it was different from any other I had ever examined. The subject matter was intriguing; it used mathematical calculations to determine the proper depth of penetration of a needle, so that fiber could be transported without breaking or slipping back and entangling. The invention was intended to create a brake pad disk for use on an aircraft. After extensive searching, I failed to find any patents that disqualified the application. I did find one article in Russian that appeared to show that the invention was not new. However, after a complete translation, I discovered the article did not describe the same invention. For me, this application was one the most difficult and most rewarding.

Needle punch

U.S. Patent No. 5,590,548
Circular Knit Legged Panty Having Knit-in Shaping Panels and a Blank and Method for Making

This was one of many garment patents I examined during my career. The technology provided areas within the legged panty that had more elastic properties for increasing pressure, which resulted in a slimming feature. The real significance of this application for me is not the technology but the attorney who filed the application. Before I joined the USPTO, I worked in a job that I hated. I called my graduate faculty mentor from college for guidance, and he suggested I talk with an examiner at the patent office to inquire about open positions. This eventually led to my work at the USPTO. As it happens, the examiner I spoke with eventually left the office to work as an attorney. She is the one who filed this application. The circle was complete, so to speak.

Legged Panty

 

U.S. Patent No. 5,996,127
Wearable Device for Feeding and Observing Birds and Other Flying Animals

Shortly after I became a supervisory patent examiner in 1998, a new examiner showed me the application that would eventually issue as U.S. Patent No. 5,996,127. It was for a helmet that had a holder for a bird feeder and a place to mount a camera. As soon as I looked at the application I knew it was a candidate for the “Patent of the Month” display. The display showed the most “interesting” issued patent for each month and was placed where almost every patent examiner, manager, and executive would see it. Nobody wanted a patent they had examined to make the display. Once we found there was no way to reject the application, I got a primary examiner to sign with the junior examiner. It did make Patent of the Month, but we all had a good laugh.

Bird Watcher_Feeder

U.S. Patent No. 8,151,720
Open Eye Sewing Needle

My first article in Inventors Eye was about the invention described in U.S. Patent 8,151,720. I met the inventor at the Minnesota Inventors Congress and wrote about how she came up with her invention. The patent issued about two years ago, allowing the inventor to move forward with marketing and protecting her device. While the invention is essentially a sewing needle, the technology she used in engineering the needle allows for a great advancement in that particular technology. Her invention makes it easy for anyone to thread a needle, even folks with large hands and weak eyes like me.

Open Needle

My time at the USPTO is coming to an end. However, my memories of those I have worked with for these many years and have met along the way will stay with me forever. Thank you for allowing me to be part of your exposure to the world of intellectual property.

Keep inventing and innovating.

John Calvert : Office of Innovation Development

Building a Better Patent System

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle Lee

Today I had the opportunity to update the public on the USPTO’s continuing efforts to support President Obama’s initiatives to build a better patent system through his executive actions. I want to share my remarks with you through this blog:

“Thank you. I’m pleased to be here at the White House today with Secretary Pritzker, Director Sperling, and Chief Technology Officer Park to discuss what we collectively are doing to advance our nation’s innovation economy. That task is at the core of our mission at the United States Patent and Trademark Office. We do so by issuing the highest quality patents possible; adding ever-more transparency to our patent system; and leveling the playing field for all players, big and small.

The USPTO is approaching its 225th anniversary next year, and throughout the agency’s history our focus hasn’t wavered. Our commitment was—is—and will be—to do everything we can to help foster an intellectual property system that provides American entrepreneurs:

  • the incentives they need to innovate;
  • the tools to help them produce and protect their creative output;
  • and the certainty they need to seek investments and balance risk while developing new technologies that benefit us all.

Even before the president’s call to do more on patent reform last year, the USPTO had efforts underway to:

  • Improve patent quality and metrics;
  • Enhance examiner training, including input from industry experts; and
  • Weed out troublesome patents through post-grant review proceedings.

Furthermore, ever since the administration’s announcement on June 4th, 2013—as my colleagues before me noted—the USPTO has been hard at work implementing four executive actions.

EXECUTIVE ACTION #1 

The first executive action aims to bring greater transparency of patent ownership information to the public. To this end, the USPTO has begun a rulemaking process. Under our proposed new rule—which reflects significant public input—the USPTO would collect patent ownership information for a patent or application and make that information available to all via our website. The result would be increased transparency aimed at:

  • enhancing competition,
  • facilitating technology transfers,
  • helping to ensure the highest quality patents, and
  • leveling the playing field for innovators.

We are now collecting input from the public on the proposed rule and are pleased to announce today two public events: one at our Alexandria, Virginia, headquarters on March 13th, and another in San Francisco, California, on March 26th. We welcome your input.

EXECUTIVE ACTION #2 

The second executive action called for new, targeted training for patent examiners to scrutinize certain types of patent claims that may be overly broad and to increase patent clarity. We have since implemented a multi-phased training program for all examiners to do just this. In addition, in the coming weeks we will launch a pilot program that uses glossaries to define terms in a patent with the goal of further promoting patent clarity.

We have also conducted numerous public engagements to share ideas, feedback, experiences and insights on further ways to improve patent quality, particularly for software-related patents, such as through our four, well-attended Software Partnership Roundtables held within this past year. We recognize that a patent with clearly defined boundaries provides notice to the public to help it avoid infringement, as well as costly and needless litigation down the road, when the patent is in litigation.

EXECUTIVE ACTION #3 

I am very pleased to announce today the culmination of the third executive action calling for new education and outreach to assist those receiving a patent infringement letter. We have just this morning published a new online toolkit of such resources, which you can find at www.uspto.gov/patentlitigation. These resources will help level the playing field for smaller “Main Street” retailers and consumers—those who are not steeped in patent law or who cannot afford teams of patent attorneys—with a variety of complementary resources. These include ways to find information about the patent being asserted (such as assignment information or its past litigation history) to ways to determine if other businesses are being sued on the same patent.

We know of no other online resource, where a recipient of a patent infringement letter can go to get as much information as is available in this toolkit. And, importantly, the new online toolkit features a two-way communication stream so the public can assist us in identifying additional, and we hope even better, resources for all to use.

EXECUTIVE ACTION #4 

Finally, our fourth executive action called for an expansion of our already extensive public outreach efforts, as well as more empirical research. I’ve already mentioned some of our outreach, which we’ve ramped up from an already high level. As for empirical research, we are proud to announce that we have expanded our Thomas Alva Edison Visiting Scholars program. That’s where we bring on board for a limited time talented scholars to examine intellectual property issues.

We’ve already recruited three distinguished scholars to research key issues related to patent litigation —Joshua Sarnoff of DePaul University, Jonas Anderson of American University, and Elizabeth Bailey of U.C. Berkeley. We’ll be announcing more scholars soon. By engaging legal and economic scholars with agency experts, we anticipate a wealth of new research and data. Empirical examination of the interaction of various aspects of our patent system will provide insights on how to further reduce unnecessary litigation and improve the quality of patents.

So that is a quick overview of our work to date on these executive actions, all designed to strengthen our patent system for our country now and in the long run. I’m also pleased by the administration’s announcement today that we will be renewing our USPTO Patents for Humanity program. You can learn more at www.uspto.gov/patentsforhumanity.

In his State of the Union address, President Obama said “The nation that goes all-in on innovation today willown the global economy tomorrow. This is an edge America cannot surrender.” At the USPTO, we are dedicated to a strong intellectual property system that empowers American businesses to succeed by keeping pace with the ever-growing rate of technological breakthroughs. We are working hand in hand with our colleagues throughout the administration, and with our stakeholders, to advance that goal.

Our work also includes actively engaging with the House and Senate as the legislative process moves forward. The patent system is the engine that powers our 21st century innovation economy. Even the most high-performance engine occasionally needs some fine-tuning. But I am confident our collaborative reform efforts will result in a patent system that performs at an unprecedented level of quality and economic output, benefiting us all.  Thank you.”

UNITED STATES PATENT AND TRADEMARK OFFICE Current Fee Schedule – Effective January 01, 2014

Current Fee Schedule – Effective January 01, 2014. (click here to see full page)

UNITED STATES PATENT AND TRADEMARK OFFICE
FEE SCHEDULE

Effective January 1, 2014

The fees subject to reduction upon establishment of small entity status (37 CFR 1.27) or micro entity status (37 CFR 1.29) are shown in separate columns. Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. For additional information, please call the USPTO Contact Center at (571) 272-1000 or (800) 786-9199.

The $400/$200 non-electronic filing fee (fee codes 1090/2090 or 1690/2690) must be paid in addition to the filing, search and examination fees, in each original nonprovisional utility application filed in paper with the USPTO. The only way to avoid payment of the non-electronic filing fee is by filing your nonprovisional utility application via EFS-Web. The non-electronic filing fee does not apply to reissue, design, plant, or provisional applications.

Patent

Patent Cooperation Treaty

General

Trademark

Fee Code
37 CFR
Description Fee Small Entity
Fee
Micro Entity
Fee
Patent Application Filing Fees
1011/2011/3011
1.16(a)
Basic filing fee – Utility 280.00 140.00 70.00
4011
1.16(a)
Basic filing fee – Utility (electronic filing for small entities)
70.00
1012/2012/3012
1.16(b)
Basic filing fee – Design 180.00 90.00 45.00
1017/2017/3017
1.16(b)
Basic filing fee – Design (CPA) 180.00 90.00 45.00
1013/2013/3013
1.16(c)
Basic filing fee – Plant 180.00 90.00 45.00
1005/2005/3005
1.16(d)
Provisional application filing fee 260.00 130.00 65.00
1014/2014/3014
1.16(e)
Basic filing fee – Reissue 280.00 140.00 70.00
1019/2019/3019
1.16(e)
Basic filing fee – Reissue (CPA) 280.00 140.00 70.00
1051/2051/3051
1.16(f)
Surcharge – Late filing fee, search fee, examination fee or oath or declaration, or application filed without at least one claim or by reference 140.00 70.00 35.00
1052/2052/3052
1.16(g)
Surcharge – Late provisional filing fee or cover sheet 60.00 30.00 15.00
1201/2201/3201
1.16(h)
Independent claims in excess of three 420.00 210.00 105.00
1204/2204/3204
1.16(h)
Reissue independent claims in excess of three 420.00 210.00 105.00
1202/2202/3202
1.16(i)
Claims in excess of 20 80.00 40.00 20.00
1205/2205/3205
1.16(i)
Reissue claims in excess of 20 80.00 40.00 20.00
1203/2203/3203
1.16(j)
Multiple dependent claim 780.00 390.00 195.00
1081/2081/3081
1.16(s)
Utility Application Size Fee – for each additional 50 sheets that exceeds 100 sheets 400.00 200.00 100.00
1082/2082/3082
1.16(s)
Design Application Size Fee – for each additional 50 sheets that exceeds 100 sheets 400.00 200.00 100.00
1083/2083/3083
1.16(s)
Plant Application Size Fee – for each additional 50 sheets that exceeds 100 sheets 400.00 200.00 100.00
1084/2084/3084
1.16(s)
Reissue Application Size Fee – for each additional 50 sheets that exceeds 100 sheets 400.00 200.00 100.00
1085/2085/3085
1.16(s)
Provisional Application Size Fee – for each additional 50 sheets that exceeds 100 sheets 400.00 200.00 100.00
1090/2090
1.16(t)
Non-electronic filing fee — Utility (additional fee for applications filed in paper) 400.00 200.00 200.00
1053/2053/3053
1.17(i)(1)
Non-English translation 140.00 70.00 35.00
† The 4000 series fee code may be used via EFS-Web
Top of pagePatent Search Fees
1111/2111/3111
1.16(k)
Utility Search Fee 600.00 300.00 150.00
1112/2112/3112
1.16(l)
Design Search Fee 120.00 60.00 30.00
1113/2113/3113
1.16(m)
Plant Search Fee 380.00 190.00 95.00
1114/2114/3114
1.16(n)
Reissue Search Fee 600.00 300.00 150.00
Top of pagePatent Examination Fees
1311/2311/3311
1.16(o)
Utility Examination Fee 720.00 360.00 180.00
1312/2312/3312
1.16(p)
Design Examination Fee 460.00 230.00 115.00
1313/2313/3313
1.16(q)
Plant Examination Fee 580.00 290.00 145.00
1314/2314/3314
1.16(r)
Reissue Examination Fee 2,160.00 1,080.00 540.00
Top of pagePatent Post-Allowance Fees
1501/2501/3501
1.18(a)(1)
Utility issue fee 960.00 480.00 240.00
1511/2511/3511
1.18(a)(1)
Reissue issue fee 960.00 480.00 240.00
1502/2502/3502
1.18(b)(1)
Design issue fee 560.00 280.00 140.00
1503/2503/3503
1.18(c)(1)
Plant issue fee 760.00 380.00 190.00
n/a
1.18(d)(1)
Publication fee for early, voluntary, or normal publication 0.00 0.00 0.00
1505
1.18(d)(3)
Publication fee for republication 300.00 300.00 300.00
Top of pagePatent Extension of Time Fees
1251/2251/3251
1.17(a)(1)
Extension for response within first month 200.00 100.00 50.00
1252/2252/3252
1.17(a)(2)
Extension for response within second month 600.00 300.00 150.00
1253/2253/3253
1.17(a)(3)
Extension for response within third month 1,400.00 700.00 350.00
1254/2254/3254
1.17(a)(4)
Extension for response within fourth month 2,200.00 1,100.00 550.00
1255/2255/3255
1.17(a)(5)
Extension for response within fifth month 3,000.00 1,500.00 750.00
Top of pagePatent Maintenance Fees
1551/2551/3551
1.20(e)
Due at 3.5 years 1,600.00 800.00 400.00
1552/2552/3552
1.20(f)
Due at 7.5 years 3,600.00 1,800.00 900.00
1553/2553/3553
1.20(g)
Due at 11.5 years 7,400.00 3,700.00 1,850.00
1554/2554/3554
1.20(h)
Surcharge – 3.5 year – Late payment within 6 months 160.00 80.00 40.00
1555/2555/3555
1.20(h)
Surcharge – 7.5 year – Late payment within 6 months 160.00 80.00 40.00
1556/2556/3556
1.20(h)
Surcharge – 11.5 year – Late payment within 6 months 160.00 80.00 40.00
1558/2558
1.17(m)
Petition for the delayed payment of the fee for maintaining a patent in force 1,700.00 850.00 850.00
Top of pageMiscellaneous Patent Fees
1817/2817/3817
1.17(c)
Request for prioritized examination 4,000.00 2,000.00 1,000.00
1819/2819/3819
1.17(d)
Correction of inventorship after first action on merits 600.00 300.00 150.00
1801/2801/3801
1.17(e)(1)
Request for continued examination (RCE) – 1st request (see 37 CFR 1.114) 1,200.00 600.00 300.00
1820/2820/3820
1.17(e)(2)
Request for continued examination (RCE) – 2nd and subseqent request (see 37 CFR 1.114) 1,700.00 850.00 425.00
1830/2830/3830
1.17(i)(1)
Processing fee, except in provisional applications 140.00 70.00 35.00
1808
1.17(i)(2)
Other publication processing fee 130.00 130.00 130.00
1803
1.17(i)(2)
Request for voluntary publication or republication 130.00 130.00 130.00
1802/2802/3802
1.17(k)
Request for expedited examination of a design application 900.00 450.00 225.00
1806/2806/3806
1.17(p)
Submission of an Information Disclosure Statement 180.00 90.00 45.00
1818/2818
1.17(o)
Document fee for third-party submissions (see 37 CFR 1.290(f)) 180.00 90.00
1807
1.17(q)
Processing fee for provisional applications 50.00 50.00 50.00
1809/2809/3809
1.17(r)
Filing a submission after final rejection (see 37 CFR 1.129(a)) 840.00 420.00 210.00
1810/2810/3810
1.17(s)
For each additional invention to be examined (see 37 CFR 1.129(b)) 840.00 420.00 210.00
Top of pagePost Issuance Fees
1811
1.20(a)
Certificate of correction 100.00 100.00 100.00
1816
1.20(b)
Processing fee for correcting inventorship in a patent 130.00 130.00 130.00
1812/2812/3812
1.20(c)(1)
Request for ex parte reexamination 12,000.00 6,000.00 3,000.00*
1821/2821/3821
1.20(c)(3)
Reexamination independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination 420.00 210.00 105.00
1822/2822/3822
1.20(c)(4)
Reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination 80.00 40.00 20.00
1814
1.20(d)
Statutory disclaimer, including terminal disclaimer 160.00 160.00 160.00
1826/2826/3826
1.20(k)(1)
Request for supplemental examination 4,400.00 2,200.00 1,100.00
1827/2827/3827
1.20(k)(2)
Reexamination ordered as a result of supplemental examination 12,100.00 6,050.00 3,025.00
1828/2828/3828
1.20(k)(3)(i)
Supplemental Examination Document Size Fee – for nonpatent document having between 21 and 50 sheets 180.00 90.00 45.00
1829/2829/3829
1.20(k)(3)(ii)
Supplemental Examination Document Size Fee – for each additional 50 sheets or a fraction thereof in a nonpatent document 280.00 140.00 70.00
* Third-party filers are not eligible for the micro entity fee.
Top of pagePatent Trial and Appeal Fees
1405
41.20(a)
Petitions to the Chief Administrative Patent Judge under 37 CFR 41.3 400.00 400.00 400.00
1401/2401/3401
41.20(b)(1)
Notice of appeal 800.00 400.00 200.00*
n/a
41.20(b)(2)(i)
Filing a brief in support of an appeal 0.00 0.00 0.00
1404/2404/3404
41.20(b)(2)(ii)
Filing a brief in support of an appeal in an inter partes reexamination proceeding 2,000.00 1,000.00 500.00*
1403/2403/3403
41.20(b)(3)
Request for oral hearing 1,300.00 650.00 325.00*
1413/2413/3413
41.20(b)(4)
Forwarding an appeal in an application or ex parte reexamination proceeding to the Board 2,000.00 1,000.00 500.00*
1406
42.15(a)(1)
Inter partes review request fee – Up to 20 claims 9,000.00 9,000.00 9,000.00
1414
42.15(a)(2)
Inter partes review post-institution fee – Up to 15 claims 14,000.00 14,000.00 14,000.00
1407
42.15(a)(3)
Inter partes review request of each claim in excess of 20 200.00 200.00 200.00
1415
42.15(a)(4)
Inter partes post-institution request of each claim in excess of 15 400.00 400.00 400.00
1408
42.15(b)(1)
Post-grant or covered business method review request fee – Up to 20 claims 12,000.00 12,000.00 12,000.00
1416
42.15(b)(2)
Post-grant or covered business method review post-institution fee – Up to 15 claims 18,000.00 18,000.00 18,000.00
1409
42.15(b)(3)
Post-grant or covered business method review request of each claim in excess of 20 250.00 250.00 250.00
1417
42.15(b)(4)
Post-grant or covered business method review post-institution request of each claim in excess of 15 550.00 550.00 550.00
1412
42.15(c)(1)
Petition for a derivation proceeding 400.00 400.00 400.00
1411
42.15(d)
Request to make a settlement agreement available and other requests filed in a patent trial proceeding 400.00 400.00 400.00
* Third-party filers are not eligible for the micro entity fee.
Top of pagePatent Petition Fees
1462/2462/3462
1.17(f)
Petitions requiring the petition fee set forth in 37 CFR 1.17(f) (Group I) 400.00 200.00 100.00
1463/2463/3463
1.17(g)
Petitions requiring the petition fee set forth in 37 CFR 1.17(g) (Group II) 200.00 100.00 50.00
1464/2464/3464
1.17(h)
Petitions requiring the petition fee set forth in 37 CFR 1.17(h) (Group III) 140.00 70.00 35.00
1453/2453
1.17(m)
Petition for revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, or for the delayed response by the patent owner in any reexamination proceeding 1,700.00 850.00 850.00
1454/2454
1.17(m)
Petition for the delayed submission of a priority or benefit claim, or to restore the right of priority or benefit 1,700.00 850.00 850.00
1455
1.18(e)
Filing an application for patent term adjustment 200.00 200.00 200.00
1456
1.18(f)
Request for reinstatement of term reduced 400.00 400.00 400.00
1824/2824/3824
1.20(c)(6)
Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) 1,940.00 970.00 485.00*
1457
1.20(j)(1)
Extension of term of patent 1,120.00 1,120.00 1,120.00
1458
1.20(j)(2)
Initial application for interim extension (see 37 CFR 1.790) 420.00 420.00 420.00
1459
1.20(j)(3)
Subsequent application for interim extension (see 37 CFR 1.790) 220.00 220.00 220.00
* Third-party filers are not eligible for the micro entity fee.
Top of pagePCT Fees – National Stage
1631/2631/3631
1.492(a)
Basic National Stage Fee 280.00 140.00 70.00
n/a
1.492(b)(1)
National Stage Search Fee – U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4) 0.00 0.00 0.00
1641/2641/3641
1.492(b)(2)
National Stage Search Fee – U.S. was the ISA 120.00 60.00 30.00
1642/2642/3642
1.492(b)(3)
National Stage Search Fee – search report prepared and provided to USPTO 480.00 240.00 120.00
1632/2632/3632
1.492(b)(4)
National Stage Search Fee – all other situations 600.00 300.00 150.00
n/a
1.492(c)(1)
National Stage Examination Fee – U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4) 0.00 0.00 0.00
1633/2633/3633
1.492(c)(2)
National Stage Examination Fee – all other situations 720.00 360.00 180.00
1614/2614/3614
1.492(d)
Claims – extra independent (over three) 420.00 210.00 105.00
1615/2615/3615
1.492(e)
Claims – extra total (over 20) 80.00 40.00 20.00
1616/2616/3616
1.492(f)
Claims – multiple dependent 780.00 390.00 195.00
1617/2617/3617
1.492(h)
Search fee, examination fee or oath or declaration after the date of commencement of the national stage 140.00 70.00 35.00
1618/2618/3618
1.492(i)
English translation after thirty months from priority date 140.00 70.00 35.00
1681/2681/3681
1.492(j)
National Stage Application Size Fee – for each additional 50 sheets that exceeds 100 sheets 400.00 200.00 100.00
Top of pagePCT Fees – International Stage
1601/2601/3601
1.445(a)(1)(i)(A)
Transmittal fee 240.00 120.00 60.00
1690/2690
1.445(a)(1)(ii)
Non-electronic filing fee (additional fee for applications filed in paper) 400.00 200.00 200.00
1602/2602/3602
1.445(a)(2)(i)
Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) 2,080.00 1,040.00 520.00
1604/2604/3604
1.445(a)(3)(i)
Supplemental search fee when required, per additional invention 2,080.00 1,040.00 520.00
1621/2621/3621
1.445(a)(4)(i)
Transmitting application to Intl. Bureau to act as receiving office 240.00 120.00 60.00
1605/2605/3605
1.482(a)(1)(i)(A)
Preliminary examination fee – U.S. was the ISA 600.00 300.00 150.00
1606/2606/3606
1.482(a)(1)(ii)(A)
Preliminary examination fee – U.S. was not the ISA 760.00 380.00 190.00
1607/2607/3607
1.482(a)(2)(i)
Supplemental examination fee per additional invention 600.00 300.00 150.00
1619/2619/3619 Late payment fee variable variable variable
Top of pagePCT Fees to Foreign Offices **
1701 International filing fee (first 30 pages – filed in paper with PCT EASY zip file or electronically without PCT EASY zip file ) 1,360.00 1,360.00 1,360.00
1710 International filing fee (first 30 pages) – filed electronically with PCT Easy zip file 1,250.00 1,250.00 1,250.00
1702 International filing fee (first 30 pages) 1,471.00 1,471.00 1,471.00
1703 Supplemental fee (for each page over 30) 17.00 17.00 17.00
1704 International search (EPO) 2,545.00 2,545.00 2,545.00
1712 International search (IPAU) 2,076.00 2,076.00 2,076.00
1709 International search (KIPO) 1,212.00 1,212.00 1,212.00
1714 International search (Rospatent) 868.00 868.00 868.00
1705 Handling fee 221.00 221.00 221.00
1706 Handling Fee – 90% reduction, if applicants meets criteria specified at:http://www.wipo.int/pct/en/fees/fee_reduction.pdf 22.10 22.10 22.10
** PCT Fees to Foreign Offices subject to periodic change due to fluctuations in exchange rate.
Top of pagePatent Service Fees
8001
1.19(a)(1)
Printed copy of patent w/o color, delivery by USPS, USPTO Box, or electronic means 3.00 3.00 3.00
8005
1.19(a)(1)
Patent Application Publication (PAP) 3.00 3.00 3.00
8003
1.19(a)(2)
Printed copy of plant patent in color 15.00 15.00 15.00
8004
1.19(a)(3)
Color copy of patent (other than plant patent) containing a color drawing 25.00 25.00 25.00
8007
1.19(b)(1)(i)(A), (ii)(A), and (iii)(A)
Copy of patent application as filed 20.00 20.00 20.00
8008
1.19(b)(1)(i)(B)
Copy of patent-related file wrapper and contents of 400 or fewer pages, if provided on paper 200.00 200.00 200.00
8009
1.19(b)(1)(i)(C)
Additional fee for each additional 100 pages of patent-related file wrapper and (paper) contents, or portion thereof 40.00 40.00 40.00
8010
1.19(b)(1)(i)(D)
Individual application documents, other than application as filed, per document 25.00 25.00 25.00
8011
1.19(b)(1)(ii)(B) and (iii)(B)
Copy of patent-related file wrapper and contents if provided electronically or on a physical electronic medium as specified in 1.19(b)(1)(ii) 55.00 55.00 55.00
8012
1.19(b)(1)(ii)(C)
Additional fee for each continuing physical electronic medium in single order of 1.19(b)(1)(ii)(B) 15.00 15.00 15.00
8041
1.19(b)(2)(i)(A)
Copy of patent-related file wrapper contents that were submitted and are stored on compact disk or other electronic form (e.g., compact disks stored in Artifact folder), other than as available in 1.19(b)(1); first physical electronic medium in a single order 55.00 55.00 55.00
8042
1.19(b)(2)(i)(B)
Additional fee for each continuing copy of patent-related file wrapper contents as specified in 1.19(b)(2)(i)(A) 15.00 15.00 15.00
8043
1.19(b)(2)(ii)
Copy of patent-related file wrapper contents that were submitted and are stored on compact disk, or other electronic form, other than as available in 1.19(b)(1); if provided electronically other than on a physical electronic medium, per order 55.00 55.00 55.00
8013
1.19(b)(3)
Copy of office records, except copies of applications as filed 25.00 25.00 25.00
8014
1.19(b)(4)
For assignment records, abstract of title and certification, per patent 25.00 25.00 25.00
8904
1.19(c)
Library service 50.00 50.00 50.00
8016
1.19(e)
Uncertified statement re status of maintenance fee payments 10.00 10.00 10.00
8017
1.19(f)
Copy of non-U.S. document 25.00 25.00 25.00
8050
1.19(g)
Petitions for documents in form other than that provided by this part, or in form other than that generally provided by Director, to be decided in accordance with merits AT COST AT COST AT COST
8020
1.21(e)
International type search report 40.00 40.00 40.00
8902
1.21(g)
Self-service copy charge, per page 0.25 0.25 0.25
n/a
1.21(h)(1)
Recording each patent assignment, agreement or other paper, per property – if submitted electronically 0.00 0.00 0.00
8021
1.21(h)(2)
Recording each patent assignment, agreement or other paper, per property – if not submitted electronically 40.00 40.00 40.00
8022
1.21(i)
Publication in Official Gazette 25.00 25.00 25.00
8023
1.21(j)
Labor charges for services, per hour or fraction thereof 40.00 40.00 40.00
8024
1.21(k)
Unspecified other services, excluding labor AT COST AT COST AT COST
8026
1.21(n)
Handling fee for incomplete or improper application 130.00 130.00 130.00
Top of pagePatent Enrollment Fees
9001
1.21(a)(1)(i)
Application fee (non-refundable) 40.00
9010
1.21(a)(1)(ii)(A)
For test administration by commercial entity 200.00
9011
1.21(a)(1)(ii)(B)
For test administration by the USPTO 450.00
9003
1.21(a)(2)
Registration to practice or grant of limited recognition under §11.9(b) or (c) 100.00
9025
1.21(a)(2)
Registration to practice for change of practitioner type 100.00
9005
1.21(a)(4)
Certificate of good standing as an attorney or agent 10.00
9006
1.21(a)(4)(i)
Certificate of good standing as an attorney or agent, suitable for framing 20.00
9012
1.21(a)(5)(i)
Review of decision by the Director of Enrollment and Discipline under §11.2(c) 130.00
9013
1.21(a)(5)(ii)
Review of decision of the Director of Enrollment and Discipline under §11.2(d) 130.00
9015
1.21(a)(7)(i)
Annual fee for registered attorney or agent in active status 120.00
9016
1.21(a)(7)(ii)
Annual fee for registered attorney or agent in voluntary inactive status 25.00
9017
1.21(a)(7)(iii)
Requesting restoration to active status from voluntary inactive status 50.00
9018
1.21(a)(7)(iv)
Balance of annual fee due upon restoration to active status from voluntary inactive status 100.00
9019
1.21(a)(8)
Annual fee for individual granted limited recognition 120.00
9020
1.21(a)(9)(i)
Delinquency fee for annual fee 50.00
9004
1.21(a)(9)(ii)
Reinstatement to practice 100.00
9014
1.21(a)(10)
Application fee for person disciplined, convicted of a felony or certain misdemeanors under §11.7(h) 1,600.00
9024
1.21(k)
Unspecified other services,excluding labor AT COST
Top of pageFinance Service Fees
9201
1.21(b)(1) or
2.6(b)(13)(i)
Establish deposit account 10.00
9202
1.21(b)(2), (b)(3) or
2.6(b)(13)(ii)
Service charge for below minimum balance 25.00
9101
1.21(m) or
2.6(b)(12)
Processing each payment refused or charged back 50.00
Top of pageComputer Service Fees
8031 Computer records AT COST
Top of pageTrademark Processing Fees ***
6001
2.6(a)(1)(i)
Application for registration, per international class (paper filing) 375.00
7001
2.6(a)(1)(ii)
Application for registration, per international class (electronic filing, TEAS application) 325.00
7007
2.6(a)(1)(iii)
Application for registration, per international class (electronic filing, TEAS Plus application) 275.00
6002/7002
2.6(a)(2)
Filing an Amendment to Allege Use under §1(c), per class 100.00
6003/7003
2.6(a)(3)
Filing a Statement of Use under §1(d)(1), per class 100.00
6004/7004
2.6(a)(4)
Filing a Request for a Six-month Extension of Time for Filing a Statement of Use under §1(d)(1), per class 150.00
6005/7005
2.6(a)(15)
Petitions to the Director 100.00
6006/7006
2.6(a)(19)
Dividing an application, per new application (file wrapper) created 100.00
6008/7008
2.6(a)(1)(iv)
Additional fee for application that doesn’t meet TEAS Plus filing requirements, per class 50.00
6201/7201
2.6(a)(5)
Application for renewal under §9, per class 400.00
6203/7203
2.6(a)(6)
Additional fee for filing renewal application during grace period, per class 100.00
6204/7204
2.6(a)(21)
Correcting a deficiency in a renewal application 100.00
6205/7205
2.6(a)(12)
Filing §8 affidavit, per class 100.00
6206/7206
2.6(a)(14)
Additional fee for filing §8 affidavit during grace period, per class 100.00
6207/7207
2.6(a)(20)
Correcting a deficiency in a §8 affidavit 100.00
6208/7208
2.6(a)(13)
Filing §15 affidavit, per class 200.00
6210/7210
2.6(a)(7)
Publication of mark under §12(c), per class 100.00
6211/7211
2.6(a)(8)
Issuing new certificate of registration 100.00
6212/7212
2.6(a)(9)
Certificate of correction, registrant’s error 100.00
6213/7213
2.6(a)(10)
Filing disclaimer to registration 100.00
6214/7214
2.6(a)(11)
Filing amendment to registration 100.00
6215/7215
7.37
Filing §71 affidavit, per class 100.00
6216/7216
7.37
Filing §71 affidavit grace period, per class 100.00
6401/7401
2.6(a)(16)
Petition for cancellation, per class 300.00
6402/7402
2.6(a)(17)
Notice of opposition, per class 300.00
6403/7403
2.6(a)(18)
Ex parte appeal, per class 100.00
Top of pageTrademark Madrid Protocol Fees ***
6901/7901
7.6(a)(1)
Certifying an International application based on single application or registration, per class 100.00
6902/7902
7.6(a)(2)
Certifying an International application based on more than one basic application or registration, per class 150.00
6903/7903
7.6(a)(3)
Transmitting a Request to Record an Assignment or restriction under 7.23 or 7.24 100.00
6904/7904
7.6(a)(4)
Filing a Notice of Replacement, per class 100.00
6905/7905
7.6(a)(5)
Filing an affidavit under 71 of the Act, per class 100.00
6906/7906
7.6(a)(6)
Surcharge for filing affidavit under 71 of the Act during grace period, per class 100.00
6907/7907
7.6(a)(7)
Transmitting a subsequent designation 100.00
6908/7908
7.6(a)(8)
Correcting a deficiency in an affidavit under 71 of the Act 100.00
Top of pageTrademark International Application Fees ***
7951
7.7(1)
International application fee Reference CFR 7.7 for payment of fees to International Bureau (IB) and IB calculator at:http://www.wipo.int/madrid/en.
7952
7.14(c)
Correcting irregularities in an International application
7953
7.21
Subsequent designation fee
7954
7.23
Recording of an assignment of an international registration under 7.23
*** The 7000 series fee code (e.g., 7001, 7002, etc.) is used for electronic filing via TEAS.
Top of pageTrademark Service Fees
8501
2.6(b)(1)
Printed copy of registered mark, delivery by USPS, USPTO Box, or electronic means 3.00
8503
2.6(b)(4)(i)
Certified copy of registered mark, with title and/or status, regular service 15.00
8504
2.6(b)(4)(ii)
Certified copy of registered mark, with title and/or status, expedited local service 30.00
8507
2.6(b)(2)
Certified copy of trademark application as filed 15.00
8508
2.6(b)(3)
Certified or uncertified copy of trademark-related file wrapper and contents 50.00
8513
2.6(b)(5)
Certified or uncertified copy of trademark document, unless otherwise provided 25.00
8514
2.6(b)(7)
For assignment records, abstracts of title and certification per registration 25.00
8902
2.6(b)(9)
Self-service copy charge, per page 0.25
8521
2.6(b)(6)
Recording trademark assignment, agreement or other paper, first mark per document 40.00
8522
2.6(b)(6)
For second and subsequent marks in the same document 25.00
8523
2.6(b)(10)
Labor charges for services, per hour or fraction thereof 40.00
8524
2.6(b)(11)
Unspecified other services, excluding labor AT COST
Top of pageFastener Quality Act Fees
6991
2.7(a)
Recordal application fee 20.00
6992
2.7(b)
Renewal application fee 20.00
6993
2.7(c)
Late fee for renewal application 20.00
6994
2.7(a)
Application fee for reactivation of insignia, per request 20.00

CENTRALIZED INFORMATION ABOUT PATENT APPLICATION INITIATIVES

Centralized Information about Patent Application Initiatives on USPTO Website

A centralized listing of major Patent Application Initiatives is now available via the USPTO website that provides applicants with access to information on several patent initiatives designed to advance and support the examination process.

Applicants now have a single website location to compare the various patent application initiatives that are available prior to examination, during examination, or after close of prosecution. Applicants can easily evaluate and contrast the benefits of participating in patent initiatives using a comprehensive matrix of initiatives and convenient links to detailed information pages. The website also provides direct access to applicant assistance for addressing questions about these initiatives.

To access more information on Patent Application Initiatives, please visit the USPTO website at: http://www.uspto.gov/patents/init_events/patapp-initiatives-timeline.jsp

Follow the USPTO on http://www.facebook.com/uspto.gov.

Follow the USPTO on http://twitter.com/uspto.

Leahy-Smith America Invents Act Implementation

Leahy-Smith America Invents Act Implementation.

Leahy-Smith America Invents Act Implementation

President Barack Obama signs the America Invents Act September 16, 2011, at Thomas Jefferson High School for Science and Technology in Alexandria, VA

MESSAGE FROM JANET GONGOLA, PATENT REFORM COORDINATOR: USPTO Releases First-Inventor-to-File Training Materials, Including Videos

As you all know, the America Invents Act became law eighteen months ago on September 16, 2011, to modernize the U.S. patent system.  One of the provisions in the AIA converted the United States to a first-inventor-to-file system from a first-to-invent system.  The first-inventor-to-file provisions become effective on March 16, 2013—the eighteen month anniversary of the AIA.

The USPTO has implemented the first-inventor-to-file provisions through a series of rules as well as a guidance document.  We presently are conducting first-inventor-to-file training for our examiners, and I’d like to share a bit about that training with you.

During the months of March and April 2013, we are educating our examiners on the new statutory framework for prior art found in AIA 35 U.S.C. 102 as well as explaining to them how to identify whether an application is subject to examination under the first-inventor-to-file provisions of the AIA or the first-to-invent provisions of pre-AIA law.  We have created two videos and a one-hour live lecture to share this information.

This summer, we will delve deeper into the first-inventor-to-file provisions with more comprehensive training conducted with smaller groups of examiners.  In particular, we will detail our first-inventor-to-file final rules along with numerous practical applications, among other topics.  And between March and the summer, we will offer “just-in-time” training for those examiners who have applications on their dockets to be examined under the first-inventor-to-file provisions.  In case you are interested, we are posting all of our examiner training materials on the AIA micro-site on the “Patents Examination” page under the “First-Inventor-to-File” category:

The agency has selected this staged training process for distinct reasons.  First, most examiners will not have an application to examine under the first-inventor-to-file provisions for several months.  Second, we aim to solidify the first-inventor-to-file subject matter for examiners by using an iterative approach.  That way, examiners will have multiple opportunities to master the subject matter and obtain answers to their questions.

In addition to training our examiners on the first-inventor-to-file provisions, we want to help all of you understand the new prior art framework.  To do so, we have prepared a series of four videos.  Each video explains a particular aspect of the new prior art regime.  More specifically, the first two videos address what constitutes prior art under the AIA, and the second two videos cover exceptions that remove prior art from being available to apply against a claimed invention.  Each video is less than 5 minutes and distills the new prior art framework into its basic components for easy understanding.

Lastly, remember that the agency has a special AIA Help Center to answer your first-inventor-to-file questions.  You can either call 1-855-HELP-AIA (1-855-435-7242) or email the Help Center at HELPAIA@uspto.gov.

Google Granted Patent on Invisible Text and Hidden Links

A new Google patent was awarded today named Systems and methods for detecting hidden text and hidden links.

The patent was filed on August 25, 2009 by Google’s Matt Cutts and Fritz Schneider. It was awarded today after being in pending status for over 3 years.

Bill Slawski posted on his blog a more human readable explanation of this patent and what it may mean for webmasters and SEOs.

As long as there have been search engines, there have been people trying to take advantage of them to try to get pages to rank higher in search engines. It’s not unusual to see within many SEO site audits a section on negative practices that a search engine might frown upon, and Google lists a number of those practices in their Webmaster Guidelines. Linked from the Guidelines is a Google page on Hidden Text and Links, where Google tells us to wary about doing things such as:

  • Using white text on a white background
  • Locating text behind an image
  • Using CSS to position text off-screen
  • Setting the font size to 0
  • Hiding a link by only linking one small character—for example, a hyphen in the middle of a paragraph

 

Those are some of the same examples described in a patent granted to Google today at the USPTO:

Systems and methods for detecting hidden text and hidden links
Invented by Fritz Schneider and Matt Cutts
Assigned to Google
US Patent 8,392,823
Granted March 5, 2013
Filed: August 25, 2009

Abstract

A system detects hidden elements in a document that includes a group of elements. The system may identify each of the elements in the document and create a structural representation of the document.

The structural representation may provide an interconnection of the group of elements in the document. The system may also determine whether one or more elements of the group of elements are hidden based at least in part on locations or other attributes or properties of the one or more elements in the structural representation.

Unsurprisingly, one of the co-inventors behind the patent is Google distinguished engineer Matt Cutts, who has spent a good part of his long career at Google exploring the many different ways that people might try to spam the search engine, and find some solutions.

I really enjoy seeing patents like this one, which may not tell us something new, but provide a reference resource that other people, including clients, can be pointed towards. They sometimes fill in some gaps on how a search engine might do something, and provide some history.

For example, this patent is based upon an earlier one that was first filed in 2003, and it’s not hard to imagine people at the Google of that time trying to figure out how to automate a way to identify text and links that might be hidden by being the same color as the background they appear upon, or being obfuscated by cascading style sheets, or written in lettering so small that it appears to be a line rather than actual text.

The Guidelines above mention the use of a single small character in a paragraph being used as a link, and the patent mentions that extremely small (1 pixel X 1 pixel) images have also been used as hidden links on pages.

As the patent also notes, CSS allows webmasters to mark a block of text as hidden, or to position it outside of visible areas of a page. Java script can also be used to hide text, and to modify documents to replace text.

Part of the process behind identifying hidden text or links on a page may involve analyzing the HTML structure of a page and its elements, such as divisions or section, headings, paragraphs, images, lists, and others. It looks at a Document Object Model (DOM) of pages to learn things about those different elements, their sizes, positions, layer orders, colors, visibility, and more.

The patent provides a few different examples of when hidden text might be found on a page, such as in the following:

In this example, server 120 may detect that the webmaster has overridden the value of the <h2> tag. Normally, the “h2″ tag is a heading size, in which H1 is very large, H2 is a little smaller, H3 is smaller still, etc. Here, the webmaster has used CSS to override the value of h2 to mean “for all text in the H2 section, make the text color almost completely black, and make the height of the font be about one pixel high.”

A viewer of this document would not see the text because it is so small, but a search engine may determine that the text is relatively important because of the H2 heading label. In this situation, server 120 may determine that the text in the H2 section is very small, which can indicate that the webmaster is attempting to hide the text in this section.

Conclusion

There are some times when designers use hidden text because they want to use a font on a page that isn’t a standard system font that might come with Windows or Apple or Linux computers, and the page won’t render the way they want. Google’s John Mueller has noted in the past on Google’s Webmaster Help Forum that is probably not a problem:

As I noted above, one of the things that I really appreciate about this patent is that it provides another place to point people to when discussing things like hidden text and links other than just Google’s help pages on the topic. It also puts the problem in the framework of a business that is trying to address a challenge rather than a web institution laying out a guideline that it expects people to follow.

14 Tips For 3rd-Party Prior Art Submissions

Law360, New York (August 20, 2012, 1:04 PM ET) — The U.S. Patent & Trademark Office recently issued the final rules on third-party prior art submissions at 77 F.R. 42150 (2012). Previously, third-party submissions of prior art in a patent application were limited to a two-month window after a patent application was published. But the final rules, enacted as part of the recent America Invents Act legislation, expand this time window.

  1. Timing:  For most patent applications, a third-party prior art submission can now be filed before the first Office Action is mailed. In cases where the USPTO examines a patent application quickly, such submissions can be filed within six months of publication. The USPTO will not consider any submissions after the notice of allowance.
  2. Effective Date: These submissions can be filed starting Sept. 16, 2012. The submissions may be filed in any pending application.
  3. Requirements: These submissions may be done anonymously and can be submitted electronically. The submissions must include:
    1. (1) a list identifying the items being submitted; (2) a concisedescription of the relevance of each item listed; (3) a legible copy of each non-U.S. patent document listed; (4) an English translation of any non-English language item listed; (5) a statement that the submission complies with the statutory provision; and (6) the required fee ($0 if fewer than three-documents submitted for a first submission, $180 otherwise). The submissions will be screened for these requirements and if not compliant, the submission will not be entered in the application. The third party is not required to serve the applicant with a copy of the submission.
  4. Results: The examiner is required to consider compliant third-party submissions in preparation for the next Office Action. The documents in the submission will be listed on the face of the issued patent, if considered by the examiner.
  5. Strategies: When preparing third-party prior art submissions, keep the following practice tips in mind.
  6. Quality Art: The best submissions will contain on-point, relevant prior art. Examiners will likely not review submissions containing nonrelevant or cumulative prior art. So, unlike the typical practice of citing prior art in an Information Disclosure Statement, it is helpful to review the prior art and make a judgment call on the relevance before submitting it.
  7. Be Concise: The explanation of the relevance of each item should contain only enough information to point the examiner to the pertinent disclosure in the prior art. Additional explanations will not only waste time and costs, but will most likely be ignored by the examiner.
  8. Submit Electronically: The EFS-WEB system will be modified to allow submissions to be filed electronically. Indeed, the EFS-WEB system will be modified to contain a specific category under which these submissions must be submitted, else they will be deemed non compliant. In the event any submission is seemed non-compliant by the USPTO division created to screen them, the third party will be notified electronically if an email address is provided.
  9. Limited Submissions: Each submission is limited to 10 items of prior art. Multiple submissions (each of up to 10 items) can be made, as long as a fee is paid for each submission. So cumulative prior art is best avoided for cost reasons. It also makes for a less concise submission.
  10. Explaining Known Art: Rather than submitting new prior art, a third party may re-submit existing prior art of record in the file, along with an explanation of additional information in that prior art. In most instances, that additional information might explain a point of view not considered by the examiner. As well, this additional information might point to parts of the prior art not discussed in any rejection and reply.
  11. Scope: The submission can be especially useful for limiting and defining the scope of the claims. If properly presented, the submission can explain the prior art in such a manner that regardless of whether that prior art reference is relied on by the examiner, the disclosure in the prior art can be used when construing the claims.
  12. Other Questions of Patentability:  The submission can include any published document relevant to the examination of the application. In other words, the submission need not be restricted to merely issues of novelty and obviousness. Accordingly, if a published document (which would arguably include a court decision) has bearing on issues that can be raised under 35 U.S.C. § 101 or 35 U.S.C. § 112, it can — and should be — submitted to bring such issues to the attention of the examiner.
  13. Applicant Submissions: If third-party submissions containing prior art are deemed non-compliant, they are not supposed to be entered into the record. But if an applicant is somehow made aware of non-compliant submissions, that applicant should submit that prior art via an Information Disclosure Statement   to avoid any claim of inequitable conduct during litigation.
  14. Competitive Monitoring:  These third-party prior art submissions will require increased monitoring programs of competitors’ published applications so that they can be submitted timely and effectively. So factor the additional resources needed for this competitive monitoring into your management programs.