Patent It Yourself - PDF Archive

ChaPter 10 | FINALING and MAILING Your APPLICATION | 297
CAUTION
These are the only five reasons for which you may
use PTMS Form 10-9. If you choose any other reason, your
petition will be dismissed.
If you are filing a PTMS based on any of these five
reasons, you may use PTMS Form 10-9 (Fig. 10S, below).
You will also need to file a supporting declaration (SD). This
can be filed with the application or at any time afterwards.
The supporting declaration that accompanies the PTMS
should be in the format of Fig. 10R with the introductory
paragraph and the last paragraph left intact. The remaining
paragraphs must be tailored to your situation and give
detailed facts (MPEP 708.02) in support of the reason for
the petition. Here are some suggestions:
• If your PTMS is based on age, merely state that you’re
over 65 and give your birth date. If you file by EFS-
Web, you file form PTO/SB/130 with the application
(or afterwards), and you need not file any supporting
PTMS declaration.
• If your PTMS is based on poor health, environmental
enhancement, conservation of energy, or countering
terrorism give detailed facts or reasoning in support
of your main reason, as I have done in Fig. 10R. Attach
photocopies of such documents to your SD if they are
relevant and label each document with a sequential
exhibit number—for example, Exhibit A, Exhibit B—
and explain it in detail in the declaration.
If you file your PTMS with the application, you should
refer to it in your transmittal letter and your postcard receipt.
In this case, you won’t be able to include the PTO filing data
on the PTMS. Don’t fill out the Certificate of Mailing at the
bottom of the form. If you file it later, fill out the Certificate
of Mailing and add the application filing data to the PTMS,
as I have done in Fig. 10S. As always, don’t forget the postcard
receipt. If you file the PTMS via the Web, the PTO’s server
will grant it automatically, but if you file it by mail, you’ll
receive a letter from the PTO stating that your petition has
been granted and the examiner in charge of your application
has been instructed to examine it ahead of turn. You should
then receive an Office Action (see Chapter 13) several months
sooner than normal.
Patent Prosecution Highway—
Expedited Examination of
Applications Filed From Abroad
In addition to the above two basic ways to get your
application examined ahead of turn, you can also have
your application examined ahead of turn in the USPTO
if you first filed your application in a foreign patent
office and then filed a U.S. application claiming priority
of your earlier-filed foreign application. In order to enter
this program in the USPTO, the foreign patent office
must have officially allowed at least one claim in the
first-filed or foreign application. If you want to enter
this program you must file a request on a PTO/SB/20/xx
form and comply with the other requirements indicated
on the form. (The letters “xx” represent the country or
jurisdiction code of the foreign country; e.g., if you first
filed in the EPO, use form PTO/SB20/EP.) All forms are
available on the PTO’s forms page. For further details,
see the notice at www.uspto.gov/patents/init_events/
pph/index.jsp. (In addition to enabling applicants who
first file abroad to have their application made special
in the PTO, applicants who first file in the USPTO and
thereafter file in a foreign patent office can have their
application made special in the foreign patent office with
a reciprocal procedure under the Patent Prosecution
Highway program. To have your application made special
in a foreign country your foreign patent agent must file
an analogous request in the foreign patent office.)
J. Filing a Design Patent Application
As I’ve indicated in Chapter 1, Section B, a design patent
covers the ornamental or aesthetic appearance, rather than
the internal structure, function, composition, or state of an
invention. Fig. 10R shows an example of the front (abstract)
page of a design patent. You may file both a design patent
application and a separate utility patent application on the
same device, but of course, they should not cover the same
feature of the device. The utility patent application should
cover only the structure (or a method) that makes the
device or invention function or operate. The design patent
application should cover an entirely separate “invention,”
namely, the ornamental (aesthetic) external (nonfunctional)
appearance of something. For example, you can file a utility
patent application on a computer program (provided it’s
associated with some hardware), its circuitry, its keyboard