By Christopher P. Singer
In a January 30, 2007 notice, the U.S. Patent and Trademark Office announced revised procedures relating to what patent applicants and
practitioners must do in response to the dreaded Notice of Omitted Items. This Notice is what every practitioner fears,
as it reflects a determination by the Office of Initial Patent Examination (OIPE)
that the application has a defect that, potentially, cannot be corrected.
Under the new procedure the Office allows for three types
of responses: (1) petition for filing date of deposit under 37 C.F.R. § 1.53(e)
(i.e., that the alleged missing item was in fact deposited); (2) petition for a
later filing date (i.e., petition under 37 C.F.R. § 1.182, supplemental
oath/declaration referring to omitted item); and (3) accept the application as
deposited by filing an appropriate amendment. Appropriate amendments include substitute specifications that renumber
pages, drawings, claims, and/or remove references to the omitted matter (see
additional examples and explanations here). Such amendments should comply with 37 C.F.R. §§
1.121 and 1.125. An indexed PDF version
of 37 C.F.R. can be downloaded here (however, it
is large and may take time depending on your network connection).
The change in procedure is only reflected in the third
course of action. Formerly, applicants
and practitioners did not have to file any response in order to accept the
application as filed. If the Office
received neither petition under options (1) or (2), the applicant was deemed to
have constructively elected the third option. However, because there existed no required time for response, the Office
would receive amended applications after examination and/or publication which
hindered prosecution. Now there must be
an active election of one of the three options by filing a response with the
Office.
The Notice of Omitted Items now has a due date for response, which is extendable under 37 C.F.R. § 1.136. Therefore, in order to toll the date a response must be filed with the Office within the extended period for response. As an added bonus, and to exacerbate further the gnashing of teeth, the Office considers the Notice of Omitted items a notice or action under 35 U.S.C. § 154(b)(2)(C)(ii) or 37 C.F.R. § 1.704(b). Therefore, extensions of time taken for the reply to the Notice will reduce patent term adjustment under 35 U.S.C. § 154(b)(2)(C)(ii) or 37 C.F.R. § 1.704(b).
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