Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 347
Fax and Internet Filing Now
Available; Email Is Coming
The PTO prefers that responses, including amendments,
petitions, appeals, and elections, should be filed via the
Internet if you’re a registered eFiler since they have to scan
and upload paper responses. If you’re not a registered
eFiler, you should file responses by fax. As a last alternative,
you still can mail your responses; be sure to always include
a receipt postcard. (Do not file applications, fees, or
drawings by fax.) Faxed papers should include, “I certify
I have transmitted this paper by fax to the Patent and
Trademark Office at [#] on [date].” The PTO will consider
the paper as having been filed on the date of transmission
or the next business day if you fax it on a nonbusiness day.
Keep your signed original and your machine’s record of
successful transmission. The PTO’s fax machines will now
automatically fax back a “fax received” receipt. (The PTO’s
main fax numbers are in Appendix 5, Mail, Telephone,
Fax, and Email Communications With the PTO.) If you
don’t have a fax machine, there are methods to fax via
computer—using either fax software that is included
with your computer’s operating system or using an online
fax service (that can also provide you with a telephone
number to receive faxes). To fax a signed document, you
will need a scanner, and a method for converting scanned
files to PDF files. If you’re a registered eFiler, go to the PTO’s
Electronic Business site and eFile the papers in PDF format
as you did with the original application.
Email communications may be used for minor matters,
such as status requests, minor corrections in a paper,
notification that a communication has been sent,
etc., but not major papers, such as amendments and
patent applications. Email addresses will be available
on Office Actions and on the PTO’s website (www.
uspto.gov). However, since email is not a secure form of
communication and the PTO is obligated to preserve
all patent applications in secret, PTO employees are not
allowed to send email containing any sensitive information
unless you specifically authorize this. If you are willing
to receive email from the PTO containing sensitive
information about your application, you must file the
following statement in your application: “Recognizing that
Internet communications are not secure, I hereby authorize
the PTO to communicate with me concerning any subject
matter of this application by electronic mail. I understand
that a copy of these communications will be made of record
in the application file.” Similarly, you should print out and
put in your file a copy of all email communications you
receive from the PTO.
20. Know Who Has the Ball
To use an analogy drawn from the game of football, during
patent prosecution the “ball” (burden of action) will always
be either on your side or the PTO’s. If you just sent in your
case, the ball will be with the PTO until they return your
postcard, send you an official filing receipt, and send you a
first Office Action. It doesn’t go back to your side until that
first OA. Once they send the first OA, you have the ball and
must usually take action within three months. Once you file
an amendment, the PTO has the ball again, and so on. You
should always know the status of your case—that is, whose
side has the ball.
21. Reread Appropriate Chapters
When you respond to an OA, you should go back and reread
the chapter that covers the issue you need to address. For
example, if a claim is rejected for prolixity, reread Chapter
9 (drafting claims). If claims are rejected on prior-art
grounds, reread Chapter 5. If your specification or drawings
aren’t in proper form, reread Chapters 8 and 10.
22. Respond to Each and Every
Point in the Office Action
A typical OA will contain several criticisms (termed
“objections” and/or “rejections”), such as drawing object ions,
specification objections, claim rejections for indefiniteness,
and claim rejections based upon prior art. You must, as
stated in Inventor’s Commandment 27, at the beginning of
this chapter, respond to each and every criticism in your next
amendment or your amendment will be considered nonresponsive,
in which case you’ll usually be given two weeks
to complete the amendment. Suitable responses can be an
argument against the criticism or some action to eliminate
the criticism—for example, by canceling claims, amending
the specification, supplying new drawings, or substituting
different claims and arguing that the substituted claims are
patentable over the prior art cited.
23. Form Paragraphs
Your actual Office Action, unlike the sample below, will
usually include several form paragraphs that quote statutes
or rules. Examiners love to use such form paragraphs. Therefore,
don’t assume, if you receive an Office Action with
numerous form paragraphs that quote basic statutes and
rules, that you’ve been singled out or that your application
is substandard: All attorneys get OAs with these form paragraphs
as well. Also, the form paragraphs that the examiner