Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 345
PTO’s site contains the PTO’s Rules of Practice (37 CFR)
and all of the Patent Statutes (35 USC).
11. Never Make Negative or Limiting
Statements on the Record
When dealing with the PTO, you should never say or
write anything that derogates your invention, you should
never admit that any prior-art reference shows (includes)
any feature of your invention, and you should never state
anything that a court could use to limit your invention. For
example, here are some improper statements that could be
used against you:
• “While applicant’s device is not as good as Smith’s …”
• “It is true that Jones shows applicant’s gear ratio …”
• “Applicant’s device is designed for use with an
electronic control.”
Admittedly, this advice may be very difficult to follow
in some situations, but it’s important to comply with.
Why? The PTO puts all correspondence into your official
file (called your “file wrapper”), and if litigation arises
regarding your patent, your adversary will use any negative
admission or limiting statement against you. Thus, if you
anticipate this potential for litigation, you’ll do a much
better job in the prosecution phase. This is so important
that I’ve made it Inventor’s Commandment 24, at the
beginning of this chapter.
12. Remember Your Continuing Duty to
Disclose Material Information
As explained in Chapter 10, Section G, you have a duty to
disclose all material information, such as relevant prior
art, known to you that bears on the patentability of your
invention. This duty is normally fulfilled when you send
in your IDS and PTO/SB/08(A and B) with the application
or three months thereafter. However, if you discover any
additional information later, you must send in a supplemental
IDS and PTO/SB/08(A and B). However, you do not
have to (and shouldn’t) admit or state anything negative
about your invention, even if what you disclose is very close
to your invention. Of course, if you find a prior-art reference
that you feel is so close that you believe your invention is not
patentable, you should abandon your application.
13. The PTO Can Request Search
Information and Literature
In connection with your continuing duty to disclose,
above, the PTO can now require, under Rule 105, that any
applicant supply any search information and literature
which the applicant knows of, which the applicant used
to draft the application, or which the examiner can use to
examine the application properly. This may include a form
paragraph or letter in your application requesting this. If
you receive such a Request, comply with it, but don’t include
any information that you already included with your IDS.
14. Be Available to Answer Office Actions
As mentioned, you’ll normally be required to respond
to a PTO Office Action within three months. If an OA is
sent while you’re away or unavailable and you fail to reply
to it, your application will, as stated in Section 5, above,
be considered abandoned. Thus, I’ve provided Inventor’s
Commandment 25, at the beginning of this chapter, to
give you ample warning. If you will be unavailable for an
extended period while your application is pending, you
should empower a patent attorney to handle it for you or
arrange to have your mail forwarded by a reliable friend or
relative. You can ask to have correspondence from the PTO
sent to anyone you choose, but the PTO generally won’t
allow you to appoint a layperson to represent you, so all
inventors must sign every paper that is sent to the PTO.
15. Consider Foreign Filing
About eight to ten months after you file your patent
application, you should consider whether you want to file
for coverage in other countries, as stated in Inventor’s
Commandment 23 (Chapter 12). Foreign filing is extremely
expensive, time-consuming, and arduous, so do it only if
you have a very important, innovative invention or a foreign
licensee who will pay the freight. There are international
conventions or agreements among most countries that entitle
you to the benefit of your U.S. filing date on any foreign
applications you file within one year after you file your U.S.
regular or provisional application. (Refer back to Chapter 12
to see how to file for a patent in other countries.)
16. You Can Call and Visit Your Examiner
If you have any questions about your application, or any
reference that is cited against it, you are permitted to call,
and/or make an appointment with and visit, the examiner in
charge of your application. Your examiner’s telephone number
will be listed on official letters that you receive from the
PTO. However, usually only one, or at most two, applicantinitiated
interviews are permitted. So save this privilege for
when you really need it. If you have an interview, you must
summarize its substance (unless the examiner does so) in the
next amendment. An interview is often a very valuable way