USPTO News: e-Commerce e-Alert

    By Christopher P. Singer --

The USPTO sent out an e-commerce alert by e-mail on August 28, 2007.  The alert provided information regarding a number of topics:

(1)  Enhancements to Private PAIR (7.1):  The new version of Private PAIR is set to launch on August 31, 2007.  More information about these enhancements can be found here.

(2)  PCT RO/101 and Fee Sheet:  Filers who attach a PCT-SAFE Zip file will also need to attach the other application parts (e.g., specification, claims, abstract, drawings, etc.), as separate PDF files.  These files cannot be added to the Zip file, because EFS-Web does not extract them for processing.  The only items extracted from these Zip files are the RO/101 and Fee sheet.

(3)  Embedded Fonts:  All characters contained in a document to be submitted using EFS-Web must be embedded.  Embedding the fonts in a document ensures that a user sees documents exactly as the author/designer intended them to be seen.  All embedded fonts within a document must be licensed and legally embeddable.  When using Adobe Acrobat 6.0 (or greater) to generate documents, the USPTO.JobOptions file can be used to create Adobe PDF documents suitable for submission to the USPTO, including embedding fonts.  More information and instructions for using the USPTO.JobOptions file can be found here at the EFS-Web Tools page.  Alternatively, if you experience embedded font problems when utilizing other PDF creation tools, you can convert the text-based PDF to an image-based PDF by selecting File > Print.  Select your PDF creation tool from the Printer name drop down menu, select "Advanced," and check the box to "Print as Image."  Select "Print" and save your PDF.

(4)  Maintenance Fee Workflow:  Petition under Rule 1.378(c) Saves Time:  EFS-Web allows for applicants to submit a Petition to Accept Unintentionally Delayed Payment of a Maintenance Fee in an Expired Patent (37 C.F.R. § 1.378(c)).  This petition can be granted automatically - the patent will be reinstated immediately - if filed using the Petition under 37 C.F.R. § 1.378(c) under "Existing Application/Patent" in EFS-Web.  This option provides an obvious advantage over the other methods of filing this petition (via paper, which can take weeks to have the petition granted; or electronically via EFS-Web as a supplemental paper to an existing application/patent, which, also, can take weeks to have granted).  More information can be found at the Quick Start Guide for Petitions here.

(5)  e-Office Action Pilot Program:  The USPTO is hosting an ongoing pilot program for customers to evaluate and comment on the usability and functionality of e-Office Actions.  This program generates e-mail notifications to participants which alerts them to outgoing correspondence from the PTO regarding their patent applications.  The program will be entering Phase IV on August 31, 2007, at which time a limited number of new participants can register.  You can sign up for the program by e-mailing the PAIR team with your Customer Number(s) at [email protected].

(6)  Upcoming e-Commerce Events:  There will be an e-Commerce booth at the following times and places:

September 25-27, 2007
National Manufacturing Week (more info here)
Exhibiting with the Japan Patent Office and the European Patent Office
Booth #4633
Rosemont, IL

October 18-20, 2007
American Intellectual Property Law Association Annual Meeting (more info here).
Washington, DC

(7)  Priority Document Exchange (PDX) Tips:  Over the last few months, the USPTO has had to deny a significant percentage of the requests coming from the Japan Patent Office and the European Patent Office due to the lack of authorization from the applicant to release a copy of the unpublished U.S. application (e.g., Form SB-39).  These Offices have strict deadlines for submission of priority documents, and failure to supply the documents on a timely basis can have unfortunate consequences.  To ensure successful transmission of your priority document(s) to an Office of Second Filing, please submit such authorization as early as possible during the prosecution of your U.S. application.

Comments

[Jason]

As a new patent attorney, (I have been an agent for a few years) I have a few questions about the new rules that I would like comments on from the patent bar. If you would like, pleae post these for responses.

1. In a family with multiple after final cases, would it be desirable to file RCE's prior to Nov. 1?

2a. Can you withdraw a traversal?
2b.Is a withdrawal of traversal of a restriction requirement, where election has previously been made, effective to make restriction final, such that under the new rules multiple divisionals are then permitted in cases without a first office action on the merits yet?

[Kevin E, Noonan]

Dear Jason:

Question No. 1 requires the cases to have been filed "in parallel" so that they are all pending at the same time. Since after Nov. 1 you will only get 1 RCE for the entire bunch, yes you should file RCE's now.

A problem you may encounter, though, will be that the claims in ALL these cases may be counted together under the 5/25 rule (unless the cases are all divisionals filed pursuant to a restriction requirement response). I would try to get some Examiner buy-in on at least some of the claims, so that you have a chance of getting some of the claims allowed before November 1 - allowed claims are not counted in the 5/25 calculation.

Questions 2a & 2b) I think the finality of the rejection will ultimately be up to the Examiner, since even before Nov. 1 she will have discretion in determining whether to examine the non-elected claims, rejoin them, etc. You can call her up and see whether she intends to make the restriction final, and then know how may divisionals you can hope to receive.

A big part of adapting the the rules will depend on partnering with the Examiners to handle these sorts of issues. Good luck, and thanks for the comment.