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388 | Patent it YOURSELF Checklist for Sending In a Regular Amendment Before you mail your amendment, please check the following list carefully to be sure that the amendment’s complete and properly done. n You have responded to each point in the OA. n You have responded to any needed drawing objection. n You have re-proofed the specification and have made any needed corrections. n You have amended the prior-art portion of the specification to account for any significant new prior art (optional). n You have not included any new matter in any amendments to the specification. n You have checked all new claims against the checklist in Chapter 9. n All claims recite structure which is physically different from every cited reference (Section 102). n You have presented the amendment in the proscribed format: (a) a list of contents is on page 1, (b) the Specification and Drawing Amendments (if any) start on respective new pages, (c) the Claim Amendments (if any) start on a new page, (d) the Remarks start on a new page, (e) the specification is amended by replacing whole paragraphs with words to be deleted struck through and words to be added underlined, (f) all claims that were ever in the application are listed in numerical order, (g) the number of every claim is followed by one of the seven required parenthetical expressions (Original, Currently Amended, Previously Presented, Canceled, Withdrawn, New, and Not Entered), (h) for Canceled and Withdrawn claims, only the claim number without the text is provided, and (i) for claims in the Currently Amended format, words to be deleted are struck through and words to be added are underlined. n The physically different structure in every claim is sufficiently different to produce new and unexpected results or otherwise be considered unobvious (Section 103). n The application includes several very narrow dependent claims with a variety of phraseologies so that you won’t have to present them for the first time if the next action is made final. n The wording in the remarks is clear, grammatically correct, and understandable. n The remarks are written in short paragraphs with ample “arguing” headings. n Every embodiment covered in your claims (originally and as amended) is described in the specification and shown in the drawings. n The patentability of all new claims is argued with respect to the references, using a two-part approach: (a) The claim has physical distinctions over the references under Section 102; (b) The claimed physical distinctions produce new and unexpected results or are otherwise unobvious under Section 103. n You have included all possible arguments for unobviousness (Fig. 13D). n A request for claim-drafting assistance under MPEP 707.07(j) has been made, if desirable. n The amendment is 1.5- or double-line-spaced with an ample top margin for punching mounting holes. n The last page of the amendment includes your name, address, and phone number. n If the amendment will cause the case to have over 20 total or over three independent claims, the proper additional fee is included (if not previously paid). n The amendment is signed and dated (no pencil) by all applicants. n An identical file copy of the amendment has been made if you are mailing the amendment. n The amendment is being transmitted on time or includes a properly completed Petition to Extend with the proper fee included. n A Certificate of Faxing or Mailing is typed in the amendment unless it's being filed electronically. n All pages are complete and present. n A receipt postcard is attached to the amendment, if you are mailing it. n If mailing, the envelope is properly stamped and addressed to “Mail Stop Non-Fee Amendments, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.” If you are sending any money with your amendment, omit “Box Non-Fee Amendments.” If you’re faxing the amendment, make sure you feed your pages carefully.
ChaPter 13 | GETTING the Pto to DELIVER | 389 Draft Amendments May Be Faxed for Discussion Applicants may now send a proposed amendment for discussion to “sound out” and negotiate with the examiner. Mark the amendment “DRAFT” or “PROPOSED AMENDMENT,” do not sign it, and fax it to the examiner. Then call the examiner in a few days to discuss the amendment by phone or visit the examiner personally. You still must file a regular, signed amendment by the due date to avoid abandonment. Make sure your amendment won’t cause the total number of claims of your application to exceed 20, or the number of independent claims to exceed three (unless you’ve paid for excess claims when you filed the application). Otherwise, you’ll have to pay an additional claims fee (expensive and usually not advisable, since three independent and 20 total claims should be more than adequate). I. If Your Application Is Allowable Hopefully, your first amendment will do the trick and the examiner will decide to allow the case. If so, you’ll often be sent a Notice of Allowability and/or a formal Notice of Allowance (N/A), the latter accompanied by an Issue Fee transmittal form. You have a statutory period of three months to pay the issue fee (and to pay any publication fee if you haven’t requested nonpublication); the three-month period is not extendable and forms are self-explanatory. You can fax or electronically transmit the Issue Fee Transmittal, but if you mail it, be sure to include a receipt postcard. You can also place an advance order for printed copies of your patent (a space is provided on the Issue Fee Transmittal form); the minimum order is ten. However, printed copies aren’t necessary as you can make photocopies from your patent deed, or download copies from the PTO or any of the free private websites (see Chapter 6, Section I2). Also, be sure to fill in the Certificate of Mailing or Faxing on the Issue Fee Transmittal, unless you file this electronically as an eFiler. If your application was published 18 months after filing you will also have to pay the PTO publication fee. The fee is included on your Issue Fee transmittal form. You will receive a “Notice of Patent Term Adjustment” with your N/A. Usually the patent term will not be extended, but if the PTO delayed in responding to an amendment or you had to appeal, you will get a commensurate adjustment. When you receive your N/A, make any needed drawing corrections at once (see Section G, above) and review the application and drawings once again very carefully to make sure everything is correct, logical, grammatical, and so on. If you want to make any amendments at this time, you can still do so, provided they don’t affect the substance of the application. Generally, only grammatical changes are permitted after the N/A. The format of the amendment should be similar to that of Fig. 13E, except that the first sentence should read, “Pursuant to Rule 312, applicant respectfully requests that the above application be amended as follows:” Then make any amendments to your specification and claims in the previously used format. Under “Remarks,” discuss the amendments, stating that they are not matters of substance and noting that they will require very little consideration by the examiner. If you’ve amended your claims in any substantial way during prosecution, after the Notice of Allowance is received you should also file a Supplemental Declaration (Form 13-3) to indicate that you’ve invented the subject matter of the claims as amended and that you know of no prior art that would anticipate these claims. Sometimes when a case is allowed the examiner will include a “Reasons for Allowance” section. You should review this carefully to be sure the reasons aren’t too narrow, since this may adversely affect the scope of your patent. If the reasons are too narrow, you should submit a rebuttal statement to neutralize the examiner’s statement. Prior to sending in the issue fee, you should go through the checklist shown below. You must make the drawing corrections and submit the new drawings by mail within the three-month period. Obviously you should do so as early as possible so you’ll have time to make revisions in case they aren’t approved. Once your issue fee is received, your application goes to the Government Printing Office and no further changes are permitted. Several months after the issue fee is paid, you may receive an Issue Notification Form, which will indicate the number of your patent and the date it will issue, usually a week or so after you receive the receipt. A few days after your patent issues, you’ll receive the deed, or letters patent, and, separately, any additional printed copies you’ve ordered. (See Chapter 15, Section H, for a discussion of maintenance fees.)
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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8 9 E. Make and Sell Your Invention
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13 14 J. The Patent Laws of Other C
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Appendixes 1 2 Abbreviations Used i
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Your Legal Companion A. You Don’t
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Your Legal COMPANION | 3 D. Should
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C H A P T E R 4 Will Your Invention
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C H A P T E R 7 What Should I Do Ne
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Fig. 7A—Invention Decision Chart
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ChaPter 7 | What SHOULD I do Next?
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How to Draft the Specification and
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A p p e n d i x 4 Fee Schedule CAUT
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482 | Patent it YOURSELF A. Patent
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A p p e n d i x 6 Quick-Reference T
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A P P E N D I X 7 Tear-Out Forms No
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Nondisclosure Agreement 1. Parties.
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Invention Disclosure Sheet of Inven
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Form 3-4: Application Data Sheet—
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Form 3-4: Application Data Sheet—
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Positive and Negative Factors Evalu
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Consultant’s Work Agreement 1. Pa
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Searcher’s Worksheet Sheet of Inv
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Form 10-1A: Declaration for Utility
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Form 10-1A: Declaration for Utility
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In the United States Patent and Tra
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Design Patent Application—Preambl
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Joint Applicants—Statement of Res
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they may do so with the written con
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Form 16-4: Recordation Form Cover S
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Universal License Agreement 1. Part
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whether or not any royalty payment
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INDex | 577 Biotechnology patents e
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Bestsellers The Small Business Star
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Online Legal Forms Nolo offers a la
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Keep Up to Date 1 Go to Nolo.com/ne
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About the Author David Pressman is
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