Patent It Yourself - PDF Archive

342 | Patent it YOURSELF
what’s required) may prove to be relatively cheap in the
long run if you can afford the expense now. As you review
the following, often dense, material, remember that expert
outside help is available.
3. Intervals Are Approximate
Except for official periods, such as the three-month period
for response to an OA or to pay the issue fee, the dates and
times I’ve given in this chapter are only approximate and are
gleaned from recent experience. They can vary quite widely,
depending on conditions in the PTO at the time you file your
patent application. You have to be patient. If you don’t receive
any communication from the PTO for a long time, say over
a year after you file your application, you should check the
latest Official Gazette for the status of the cases in your group.
Also, if it’s over six months after you file an amendment,
you should make a call, or send a letter, to the examiner or
examining group to determine the status of your case. (If you
are willing to submit a lot of paperwork, install software, and
so forth, you can access the PTO’s “Private PAIR” system,
which enables you to see a docket sheet and all of the papers
for your patent application on the PTO’s website. To get on
Private PAIR, see the instructions in Chapter 10, Section E5,
or in Section D, below.)
4. You’ll Be Able to Correct Technical Errors
Don’t worry too much about minor technical errors (except
for dates—see next consideration) when dealing with the
PTO. If you make one, you’ll be given an opportunity to
correct it. The PTO has so many rules and regulations that
even patent attorneys who deal with them all the time can’t
remember them all. Also, the PTO is flexible in giving do-ityourself
(pro se) applicants opportunities to correct nondate
errors that don’t affect the substance of the application.
5. Dates Are Crucial
Every OA that you receive from the PTO will specify an
interval by which you must reply to the OA. If you fail to
reply in the time the PTO allots you, the penalty is draconian:
Your application will go abandoned, although it can be
revived at a price. (See Section Q, below.) Thus, you should
write the due date for response to every OA promptly on
the OA and on your calendar and heed it carefully. If you’re
not the type who can faithfully heed due dates, you must do
something about this—for example, by hiring a methodical
friend to bug you. You can even turn the whole job of
prosecution over to a patent attorney. If you miss a crucial
date, you’ll find that the PTO is a cruel and unforgiving
bureaucracy. However, as stated, you can usually pay
to revive applications that go abandoned for lateness in
responding—see Section Q.
6. Situations Not Covered
If any situation occurs that isn’t covered in this book, and
you can’t find the answer by looking in the Rules of Practice
or Manual of Patent Examining Procedure (see Section 10,
below, for how to obtain these), call the PTO, consult an
attorney or agent, or use common sense and do what you
would expect to be the logical thing to do in such a situation.
Newly Discovered Reference: For example, suppose that
after you’ve filed your patent application you find a prior-art
reference that considerably narrows what you thought your
invention to be. You should bring this to the attention of
the PTO by way of another (supplemental) IDS and PTO/
SB/08, and submit an amendment substituting narrower
claims that avoid the reference. Remember that you have a
continuing duty to disclose all material information about
your invention to the PTO.
Embodiment Changes: If you discover that an embodiment
of your invention doesn’t work, delete it from your
application. (See Section E, below, for how to do this.) If
you discover a new embodiment of your invention that
supersedes the present embodiments, file a continuation-inpart
application. (See Chapter 14.)
Entity Size Change: If you license or assign your
application to a large entity (or such a license is terminated
or your application is reassigned back to you), you should
send a letter to the PTO asking that your small-entity status
be canceled (or send in a letter to establish SE status).
Change of Address: If you change your address, you should
send a change of address form (use Form PTO/SB/81 on the
PTO’s site) or an appropriate letter (caption as in Form 13-1
but headed “Change of Applicant’s Address”) to the PTO.
PTO Mistakes: If the examiner cites a prior-art reference
against your application that is later than your filing date,
obviously the examiner made an error (this happens occasionally).
You should call or write to bring it to the examiner’s
attention so that a new Office Action can be issued. If the
PTO fails to send you a copy of a non–U.S. patent reference
that it has cited against you, send an appropriate paper (captioned
as in Form 13-1) headed “Request for Copy of Missing
Reference” to the PTO. If a part of the OA doesn’t make
sense, or a part seems to have been omitted, send an immediate
“Request for Clarification of Office Action.”
Finally, as a wise person said, “Don’t be afraid to ask dumb
questions: They’re easier to handle than dumb mistakes.”
Bureaucratic Static: The examiner may object to something
in your application if it’s unusual or irregular, even