Patent It Yourself - PDF Archive

398 | Patent it YOURSELF
3. Petition to Revive If Delay Was Avoidable
but Unintentional (Rule 137(b))
If you failed to send in your amendment or issue fee within
the three-month period and your delay was “avoidable but
unintentional”—such as, you merely dropped the ball, or
misinterpreted the time to reply to the OA—you can still
petition to revive the application, albeit at a much higher
cost. (Again, this petition can be used for any delay beyond
the three-month period but most applicants use it for delays
beyond the six-month period because the petition for delays
up to six months can be obtained at a cheaper cost using the
Extension petition of Form PTO/SB/22 above.) You should
file two papers:
• your reply
• a petition to revive (use PTO/SB/64) with the fee
• if you foreign-filed your application but failed to notify
the PTO within 45 days, use PTO/SB/64a to revive the
application; the fee is high.
R. Summary
After your application is filed, you will receive an online
acknowledgment or receipt postcard in a few weeks and an
official filing receipt soon after that, usually with a foreign
filing license that permits you to file abroad before six
months has elapsed.
Check the information in the filing receipt carefully and
apply for any needed corrections. Your application is now
“patent pending” and you can release details if necessary
without undue risk. Be sure to file an IDS within three
months.
When you receive a first Office Action check it
carefully and be sure to respond in the time allotted or
any extensions you buy. After you respond you’ll receive
a second and usually final Office Action or a notice of
allowance.
If you didn’t file an NPR when you filed the application
your application will be published on the PTO’s website
18 months after filing and the public can cite new prior art
against your application. If the case is allowed you’ll have to
pay an issue fee and then will receive the patent deed.
During prosecution you can ask the examiner to write
claims for you if the invention is patentable. Note that
standards of patentability vary widely and the PTO can be
unfair, so you should argue against and appeal any rejection
you feel is improper.
It’s important to avoid making any negative statements
on the record, comply with your continuing duty to disclose
material information about the invention, avoid amending
your claims unless necessary, and consider foreign filing
within one year of your filing date. It’s often useful to call
or visit your examiner. You are not allowed to add any new
matter to your application, but you must respond to every
point in any Office Action.
To respond to an Office Action first review your
application, then the cited references, and then decide
what is novel and unobvious about your invention and
consider amending the claims to define over the prior art if
necessary. When drafting your remarks in the amendment,
go through the flowchart and use possible arguments for
patentability. Be sure to separate your arguments into
novelty and unobvious parts and distinguish between
physical novelty and new results.
Your amendment should argue the patentability of your
claims. It should not argue the patentability of the invention
generally, nor the drawings, or specification.
The PTO requires a specific format for an amendment,
with each section starting on a new page and a listing of
every claim that was ever in the application. Follow the
specific rules for drafting remarks.
The PTO prefers that you eFile the amendment if
possible. Otherwise fax your amendment rather than mail
it, unless it includes new drawing sheets. If you receive a
final action your only options are to appeal, amend the
claims as required, interview the examiner to come to
an agreement, try a further amendment without raising
new issues, file a full or RCE continuation application,
or abandon the application. You can petition the
Commissioner for nonsubstantive matters.
Design patent application prosecution is similar to utility
prosecution, except that the design must be unobvious in
the aesthetic sense. If you miss a PTO deadline, you can
buy an extension, or petition to revive if the delay was
unavoidable or unintentional.
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