Patent It Yourself - PDF Archive

340 | Patent it YOURSELF
(Chapter 12). However, it’s not desirable to reveal details of
your invention to potential competitors at this early stage,
especially since your application may not become a patent.
4. Send in Your Information
Disclosure Statement (IDS)
If you haven’t done so already, after receiving your official
filing receipt send in your Information Disclosure Statement
as discussed in Chapter 10, Section G. If you filed
your application by mail send in the IDS by filling out a
Transmittal Form (SB/21 or Form 10-05). Accompany it
with the SB/08A and SB/08B or 10-6A and 10-6B forms as
necessary, and copies of any non-U.S. patent references you
listed on the form. If you filed electronically, and you’re a
registered eFiler, you won’t need a transmittal form. Instead
you get the electronic SB/08a form by going to www.uspto.
gov/ebc, then clicking EFS-Web Unregistered eFilers, then
Electronic Filing, then eFiling Forms, or go directly to www.
uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf. Open
the SB/08a form, fill the blanks, and save the form as a PDF
file, (for example, IDS.pdf) as you did with the Data Sheet
when you filed, and make a PDF of any non-U.S. patent
references (known as Nonpatent Literature or “NPL”), and
file all of these using the PTO’s electronic business site.
Remember that the PTO wants the IDS to be filed within
three months of the application’s filing date. Don’t forget to
fill in all the blanks on the forms.
If you don’t file the IDS within three months of your
filing date, or before your first Office Action, or within three
months after entry into the “national” stage for references
cited in foreign applications, the PTO will still consider it.
However, you must file it before a final action or a notice of
allowance is sent, and (1) pay a “Late IDS Fee” (see Appendix
4, Fee Schedule), or (2) include a certificate as follows.
“Each item of information contained in this Information
Disclosure Statement (IDS) was cited in a communication
from a foreign patent office in a counterpart foreign patent
application not more than three months prior to the filing
of such IDS, or no item of information contained in this
IDS was cited in a communication from a foreign patent
office in a counterpart foreign patent application, or, to my
knowledge after making reasonable inquiry, was known
to any individual designated in 37 CFR 1.56(c) (inventor,
attorney, assignee, etc.) more than three months prior to the
filing of such IDS.”
You can even file the IDS after a final action or notice of
allowance is sent, but before you pay the issue fee. However,
you must include the above certificate, a petition requesting
consid eration of the IDS, and a petition fee—see Fee
Schedule.
If you send in an IDS and later discover any additional
references—for example, in the course of foreign prosecution
—you must bring these to the attention of the PTO through a
supplemental IDS. (Don’t send an IDS for any references the
examiner cites in your U.S. case; these will automatically be
listed, along with those which you cited, on the patent.)
5. First Office Action
About six months to three years after the filing date (patent
prosecution is mostly a waiting game) you’ll receive a
communication from the PTO known as a “first Office
Action” (OA), sometimes called an “official letter.” It
consists of forms and a letter from the examiner in charge
of your application, describing what is wrong with your
application and why it cannot yet be allowed. (Rarely will
an application be allowed in the first OA.)
Specifically, the OA may:
• reject claims
• list defects in the specification and/or drawings
• cite and enclose copies of prior art that the examiner
believes shows your invention is either:
■■
not novel, or
■■
obvious, and/or
• raise various other objections.
The PTO no longer sends U.S. patent references with
OAs, although it still sends foreign patents and nonpatent
literature. You must download the patent references from
the Internet or send for them by mail. The PTO has a batch
downloading procedure under its PAIR system, but you can
also download them from the PTO’s patent database site or
either of the free patent copy supply sites listed in Chapter 6.
To find out approximately when you’ll receive the first
OA from the PTO, you can go to the PTO’s home page
(www.uspto.gov), then click Patents, then “OG (Official
Gazette)—regular and special notices,” then find the
latest OG, open the Notices, select Technology Centers,
and determine the latest application filing date for the
Technology Center to which your application has been
assigned. Also you can call the clerk of the examining
group where your application has been assigned. The name
of this group will be typed on your filing receipt. PTO
phone numbers are listed on the PTO website, in Appendix
5, and are published irregularly in the Official Gazette (OG).
Each issue of the OG also gives date status information for
patent applications in each examining group. Also, you
can call the PTO’s main number (see Appendix 5, Mail,
Telephone, Fax, and Email Communications With the
PTO) to find the telephone number of your group.
I suggest that you write three date entries (as shown
below) on every paper you receive from the PTO: