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
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.
2017 January Patent Prosecution Lunch

2017 January Patent Prosecution Lunch

  • 2.
    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
  • 3.
    eMod Text PilotProgram • 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
  • 4.
    eMod Text PilotProgram- 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.
  • 5.
    eMod Text PilotProgram- 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?)
  • 6.
    eMod Text PilotProgram- EFS
  • 7.
    eMod Text PilotProgram- 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.
  • 8.
    eMod Text PilotProgram- 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)
  • 9.
    eMod Text PilotProgram- 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
  • 10.
    eMod Text PilotProgram- EFS • Valid/Recommended Fonts: – Georgia – Times New Roman – Arial – Arial Black – Arial Narrow – Arial Rounded MT Bold – Tahoma – Verdana – Trebuchet MS – Courier New – Calibri
  • 11.
    eMod Text PilotProgram- PAIR
  • 12.
    eMod Text PilotProgram- EFS • Download Outgoing Correspondence (e.g., Office Actions)
  • 13.
    BREXIT & EuropeanUnitary 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
  • 14.
    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.
  • 15.
    India Changes • India’snew 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”).
  • 16.
    India Changes • Previouslyin 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.