Patent It Yourself - PDF Archive

390 | Patent it YOURSELF
Checklist for Paying an Issue Fee
n You made all needed drawing corrections and enclosed
any needed formal drawings.
n You have made any needed specification or claim
amendments (PTO Rule 312).
n You have properly completed and signed the Issue Fee
Transmittal Form.
n You have filed a completed Supplemental Declaration
if you have made any significant claim changes during
prosecution.
n If transmitting by mail, you have enclosed a check or a
completed credit card Form PTO-2038 for the issue fee. If
transmitting by fax, you used Form PTO-2038.
n If you are mailing the issue fee, you have attached a
receipt postcard, properly stamped and addressed.
n If transmitting by mail you have completed a certificate
of mailing or faxing on the Notice of Allowance.
n You are transmitting the issue fee papers by the due date
(no extensions allowed).
n If you are mailing the papers you have made a file copy of
all issue fee transmittal papers.
J. If Your First Amendment
Doesn’t Result in Allowance
If your first amendment doesn’t place the application in
condition for allowance, the examiner will usually make
the next OA final. However, if the second OA cites any new
references, it won’t be made final unless the examiner had
to dig out the new references to meet some new limitations
in your amended claims. If your second OA isn’t made
final, you should respond to it in the same manner as you
responded to the first OA. However, if the second OA is
called final—and it usually will be—note the provisions of
Rules 113 and 116, which govern what happens after a final
action is sent:
Rule 113—Final Rejection or Action
(a) On the second or any subsequent examination or
consideration, the rejection or other action may be
made final, whereupon applicant’s response is limited to
appeal in the case of rejection of any claim (Rule 191), or
to amendment as specified in Rule 116. Petition may be
taken to the Commissioner in the case of objections or
requirements not involved in the rejection of any claim
(Rule 181). Response to a final rejection or action must
include cancellation or appeal from the rejection of
each claim so rejected, and, if any claim stands allowed,
compliance with any requirement or objection as to
form.
(b) In making such final rejection, the examiner shall
repeat or state all grounds of rejection then considered
applicable to the claims in the case, clearly stating the
reasons therefor.
Rule 116—Amendments After Final Action
(b) After a final … action … in an application …
(1) An amendment may be made canceling claims or
complying with any requirement of form expressly set
forth in a previous Office action;
(2) An amendment presenting rejected claims in better
form for consideration on appeal may be admitted;
or
(3) An amendment touching the merits of the application
or patent under reexamination may be admitted
upon a showing of good and sufficient reasons why
the amendment is necessary and was not earlier
presented.
(c) The admission of, or refusal to admit, any amendment
after a final … action, … will not operate to relieve
the application or reexamination proceeding from its
condition as subject to appeal or to save the application
from abandonment ….
These rules mean, in effect, that “final” isn’t final after
all. It’s just that the rules shift a bit. If you want to continue
prosecuting your patent application after a final OA, you
must take one of the following actions:
1. Narrow, cancel, or fix the claims as specified by the
examiner.
2. Argue with and convince the examiner to change
position.
3. Try a further amendment narrowing the claims.
4. Appeal to the Board of Appeals and Patent
Interferences (BAPI), together with an optional
Pre-Appeal Conference.
5. File a continuation application or an RCE (Request
for Continuing Examination) (see Chapter 14).
6. Petition the PTO Commissioner.
7. Abandon the application.
Let’s examine these options in more detail.