Patent It Yourself - PDF Archive

278 | Patent it YOURSELF
be open to the public on the PTO’s Public PAIR site. You
may find this undesirable since it will give competitors and
potential infringers a peek at your prosecution strategy and
arguments before your patent issues. If you check the NPR
box and later file abroad and you don’t revoke your NPR
and notify the PTO of such foreign filing within 45 days
(use Form PTO/SB/36), your application will be regarded as
abandoned unless you pay a stiff fee and declare that delay
was unintentional. To fill out the NPR, merely fill in the
name of the first inventor, the title, the docket number, and
the date. The first inventor should sign it and print their
name under the signature. You must file the NPR with the
application; if you file it later it will be in vain.
Common Misconception: If the PTO publishes your patent
application, this indicates that it believes your invention is
patentable.
Fact: If you don’t file an NPR at the time of filing the
application, the PTO will publish your application 18
months later, regardless of its patentability.
Box 17: Other: If you attach any other documents, check
this box.
If you’re not sure your claims are entirely proper and
would like the examiner to write claims for you if they
find allowable subject matter, type “Request Under MPEP
Section 707.07(j)” and file the Request (Form 10-8). (I
recommend this.)
Box 18: Check the box before “Correspondence address
below” and complete the next four lines as you did with the
PAD (see Section E, above).
In the next-to-last line type the name of the inventor
who is to receive correspondence from the PTO. This
inventor should sign and date the bottom lines.
PPA: The form does not contain any box to refer to
any PPA that you’ve filed. (Do not use Box 18 to refer
to a PPA.) You should claim the benefit of any PPA that
you’ve filed in the “CROSS REFERENCE TO RELATED
APPLICATIONS” section of the specification, as explained
in Chapter 8, Section I. Be sure to include the serial number
and filing date of your PPA. You must file your regular
patent application (RPA) within one year of your PPA’s
filing date if you want to claim the benefit of your PPA. If
the last day of the one-year period falls on a weekend or
holiday, you may file your Regular Patent Application (RPA)
on the next business day after the weekend or holiday. The
RPA must name at least one inventor who has been named
in the PPA. If you file the application without a PPA claim
in your specification, you must amend the specification
within four months from your RPA’s filing date or 16
months from your PPA’s filing date.
b. Fill Out Fee Transmittal and Pay
by Credit Card or Check
Fill out the Fee Transmittal (Form 10-3 or PTO/SB/17) by
completing the name of the first (or only) inventor and
docket number at the top right. Form 10-3 includes the fees
as of this edition. Note, that the PTO usually raises its fees
on October 1 of each year, so if you’re filing after October 1,
check for current fees at the PTO website. The PTO also
changes its form PTO/SB/17 each October 1, so you can
download the most current version of that, as well. See Fig.
10K for an example of a completed Fee Transmittal.
A. Fill out the First Named Inventor and Attorney
Docket No. boxes in the upper right corner as before.
B. Check “Applicant claims small entity status” box if
you qualify. You qualify for small entity status if you
haven’t assigned or licensed (or are not obligated
to assign or license) the invention to a for-profit
company with over 500 employees. See PTO Rule 27
(37 CFR 1.27).
C. Fill in the “Total Amount of Payment” box. (Do this
last after you calculate the total.)
D. Check the appropriate Check, Credit Card, or Money
Order box.
1. Basic Filing, Search, and Examination Fees: Add
the Small Entity fees in the “Utility” line and type
the total ($545 on this form) in the rightmost
column. You must pay all three fees together.
2. Excess Claim Fees: The Basic Filing Fee entitles
you to file up to three independent claims and
20 total claims, assuming that each dependent
claim refers back to only one preceding claim
(independent or dependent). If you don’t have
more than 20 total and three independent claims,
you can leave this section blank.
If you’re filing over 20 total claims, three
independent, or a multiple dependent claim (not
recommended) fill out these blanks. Enter the total
number of claims (independent and dependent)
in the blank under “Total Claims.” Subtract 20
from this figure, enter the difference under “Extra
Claims,” and type the fee for each extra total claim
over 20 (Large or Small Entity) from the list in the
upper right of this section under “Fee ($),” and
type the product under the “Fee Paid ($).” If you
have more than three independent claims, enter
the total number of independent claims under
“Indep. Claims,” subtract 3 from this figure, enter
the difference under “Extra Claims,” type the fee
for each extra independent claim over three (Large
or Small Entity) from the list in upper right part of