Patent It Yourself - PDF Archive

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.)