Prosecution Luncheon

Patent

January 2017

New Post-Prosecution Pilot (P3)• Combines features

– Pre-Appeal Brief Review Conference Pilot (Pre-Appeal)

– After Final Consideration Pilot Program (AFCP)

• Post-Prosecution Pilot (P3)– Submit Proposed After Final Amendment for

Consideration by a Panel of Examiners– Opportunity to Present to Panel (in person/phone)– Panel Provide Brief Written Summary

Claim status Reasoning for maintaining rejection

See, http://www.uspto.gov/patent/initiatives/post-prosecution-pilot

Program Over!Limit Reached

January 12, 2017

eMod Text Pilot Program

• eMod = Future EFS & PAIR

• Benefits– Upload Applications (and other documents

eventually) as Word/text documents (.docx)– Download documents as Word/text documents

(e.g., Office Actions)

• eMod Pilot Program Open– BUT need to apply to the whole customer

number

eMod Text Pilot Program- Requirements• Access to EFS-Web.• Registered eFiler- opted into the eMod Text

Pilot Program via Customer Number. • Registered eFilers may save a submission as

a work-in-progress for up to 7 days.• Text intake feature

– Only available for new Utility Nonprovisional submissions.

– Unavailable for all other submission types.• All required fields must be completed in order

to proceed with the submission. The required fields are indicated with an asterisk.

eMod Text Pilot Program- Requirements• Open XML Word Processors (.docx)

– Microsoft Word 2007 or higher– Google Docs– Office Online– LibreOffice– Pages for Mac

• Specification, Claims, and Abstract submitted as text (separately?)

eMod Text Pilot Program- EFS

eMod Text Pilot Program- EFS• Warning Messages (yellow) for:

– Track changes,– Comments*– Bookmarks*– Hidden Items*– Continuous line numbering*– Text decorations*– Unused invalid fonts*– Unnecessary document properties*

• *The system will automatically make changes to the document.

eMod Text Pilot Program- EFS• Warning Messages (yelllow) for:

– Abstract word count over 150– Unsupported OLE Objects (Supported OLE

Objects include Visio.Drawing 11, Equation.DSMT4, ACD.ChemSketch.20, ChemDraw.Document.6.0, Equation.3)

eMod Text Pilot Program- EFS• Unable to Proceed further (red warning):

– Duplicate application parts– Invalid Page Size – cannot exceed Letter or A4– Contains Content control– Contains Custom XML– Invalid font

eMod Text Pilot Program- EFS• Valid/Recommended Fonts:

– Georgia– Times New Roman– Arial– Arial Black– Arial Narrow– Arial Rounded MT Bold– Tahoma– Verdana– Trebuchet MS– Courier New– Calibri

eMod Text Pilot Program- PAIR

eMod Text Pilot Program- EFS• Download Outgoing Correspondence

(e.g., Office Actions)

BREXIT & European Unitary Patent and Unitary Patent Court

• UK government has confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement. (28-Nov-2016)

• https://www.gov.uk/government/news/uk-signals-green-light-to-unified-patent-court-agreement

Inauguration- USPTO Changes • USPTO Political Appointees Will

Resign by Inauguration (Jan 20, 2017) – Director- Michelle Lee??? – Deputy Director- Russ Slifer– Chief of Staff- Vikrum Aiyer– Chief Communications Officer-

Patrick Ross (Jan 19)– Plus a few others

• Commissioner for Patents- Drew Hirshfeld will then be Acting Director for the USPTO.

India Changes• India’s new law is now similar to Australia in

that they have a date of 6 months (previously 12 months) from the first official action for putting an application in order for grant.

• There is an extendable period of 3 months, if the extension of time & fee is paid before the expiration of the 6 months’ time.

• Docketing – 6-month deadline for the application to be in

order for grant. – 1-month from the mail date of the examination

report to respond to the examination report (“instructions due – soft deadline”).

India Changes

• Previously in India, the claims could not be amended at the time of the national phase entry.

• Under the new law, deletion of claims is now allowed at the time of the national phase entry to reduce the filing costs.

• However, no changes to the specification or additional claims may be added at the time of entry.

Prosecution Luncheon

Patent

January 2017