The Most Important Aspects of the New Patent Rules Supporting the U S P T O ’s 21st Century Strategic Plan That Come Into Effective in November 2008

I. Introduction

The USPTO has a long-range plan, the 21st Century Strategic Plan to transform the USPTO into an organization to respond efficiently. As part of that plan, the USPTO published a series of changes in the final standards of the rules of patent practice in 37 CFR. The following lists the three most important general application and changes in U.S. patent professionals. Much of the material below is taken directly from a power point presentation published by the USPTO on these rules changes.

II. The most generally applicable rules and major changes

1. Sign the ability to write some documents, which the USPTO Requests “S” Signatures

S-signatures (Article 1.4 (d) (2)):

Example of signature of applicant:

/ James Jones /

James T. Jones

An S-signature is any signature between forward slashes is not a hand (§ 1.4 (d) (1) or (e)) or a code signing EFI (§ 1.4 (d) (3)). It is inserted electronically (eg a word processor) or mechanical means. S-Signatures may be used in documents that are:

Hand or by mail (courier) delivery,

Transmitted by fax, or

Submitted directly by EFI as Tagged Image File Format (TIFF) attachment (eg, scans), to the Office.

This allows professionals to have an electronic workflow, thus enabling the elimination of paper during the normal work in the development and review.

2. After the change of rule amendments submitted preliminary applications

Draft of amendments that are present on the date of filing is treated as part of the original disclosure. Applicants are responsible for reviewing all preliminary amendments present on the filing date and a reference to it on a § 1.63 oath or declaration of each such amendment to preliminary otherwise not present in the request. Draft amendments seeking the cancellation of all claims without presenting new or substitute claims will be rejected.

Therefore, the inventor’s statements should include a mechanism (eg a checkbox) to indicate that a draft amendment was submitted with the request that the draft amendment is part of the application as filed, the and inventor who has reviewed the draft amendment.

3. After restrictions on amendments to an Office Action

The following rule changes apply to applications after a response to a first office action.

Additional presentations such as the addition of claims or evidence in general, not least to limit the workload of the examiner. Specifically, after a complete response has been filed, the Office may enter a supplemental response to be submitted before final rejection or allowance of sufficient time and to be entered into the application file, if the answer is clearly beyond superficial examination limited to the cancellation of claims, the adoption of an examiner suggestion (s); placing the application in condition for allowance; response to a requirement of the office after the first response was ; correction of informalities (eg, typographical errors), or simplification of issues for appeal.

This requirement forces professionals to ensure that a response to a first office action has been completed on all issues, and that the response is all the credits that the applicant might consider taking in response to the appeal at a later final action.

III. Conclusion

The most important rule changes in the USPTO’s Strategic Plan motivation rules are being implemented in November 2004 wrote to signatures, the amendments to define a new application for membership of the new application, and generally prevented the presentation amendments that are not in response to an Office action after the USPTO has sent a first office action. Each of these changes require significant changes in our practice.