Patent drawings for patent application and replacement drawings after notice of allowance

Replacement Drawings After a Notice of Allowance?

Can the USPTO Require Replacement Drawings?

YES.

Some Applicants for US Patents represent themselves and, on occasion, the pro se Applicant successfully argues to the Examiner that the Application’s claims are patentable.

Other Applicants are represented by patent professionals and (due to various national and international deadlines) a complete but not pristine Patent Application that obtains a filing date is filed in the USPTO.

For some Patent Applications, Examiners issue a Notice of Allowance where the Issue Fee must be paid by a specified date. After the Examiner’s issues the Notice of Allowance, the Application is transferred to the Publications Branch of the USPTO. It is here that a replacement drawing may be required.

Code of Federal Regulations for Utility Patent Application Drawings

37 Code Federal Regulations 1.84 (a) (1), in part, reads, “37 C.F.R. 1.84 Standards for drawings.  (1) Black ink.  Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings”.

After receiving the allowed Patent Application from the Examiner, the Publications Branch can require correction of a part of the Application, such as the Drawings. For instance, when Applicants have not filed the required black and white line drawings in the as-filed Application, but rather used photographs or non-line computer generated images to obtain a filing date.

Most of the time, the drawings are replaced before the Notice of Allowance is granted. However, occasionally, the black and white line drawings are required after the Notice of Allowance and before the grant of the Patent.

Patent drawings for replacement drawings after notice of allowance

Replacement Drawings for Utility Patent Applications

A part of the Notice for Corrected Application Papers looks something like the example below.

Notice to File Corrected Application Papers for Patent

In the Notice to File Correction Application Papers, the Publication Branch of the USPTO requires replacement black and white line drawings before the Patent Application will be granted. One or more as-filed figures need to be replaced by black and white line drawings.

To properly respond to the Notice to File Correction Application Papers – Drawings, the Applicant must file the required black and white line drawings within the allotted time identified on the Notice to File Correction Application Papers.

Ask Us Anything… about Intellectual Property!

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Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Do a Claims Check on Your Patent

Claims Checks Are Important  

Claims Checks

Doing claims checks of  your Patents are essential because they define the scope and boundaries of the Patent.

Claims are Legal Boundaries

As previously indicated in this Blog on Patent Infringement: “A deed for real property determines the real property’s boundary and what constitutes a trespass. In a similar vein, Patent claims define the intellectual property boundary of the Patent and what establishes an infringement.”

The Situation

Approximately five years ago, our company filed three Patent Applications for three separate products that our company continues to market and sell to our national and international customers.

Our attorneys and the USPTO examiners had several rounds of arguments regarding the patentability of claims of our three Patent Applications. Over this timespan, some of the as-filed claims of the three Patent Applications were amended, canceled and/or re-amended by our attorneys. Before the end of the patenting process, our attorneys also added some new claims not previously set forth in the as-filed claims. Even the examiners made some examiners’ amendments to the claims.

After all the arguments, the USPTO issued Notice of Allowances. We paid the Issue Fees and we eventually received the three granted Patents.

The claims of two of the Patent we received were perfect. However, the claims checks revealed that about half of the claims of the third Patent were incorrect.

What should we do?

Actions: When a Claims Check Reveals Errors

  • Although not recommended, a few Patent owners do not attempt to correct the incorrect claims.
  • Review the USPTO file wrapper and your files to determine where and when the claims errors occurred. If the errors were caused by the USPTO, the USPTO requires no additional fees to correct the incorrect claims. If the errors were caused by the Applicant(s), the USPTO requires the payment of a government fee to correct the errors.
  • Sometimes, other parts of a Patent contain errors that need correction.
  • Submit a Certificate of Correction (PDF) to the USPTO.

Claims can be considered the heart and soul of the Patent, so it’s essential that yours be correct.

Need More Information?

If you have a question about Claims checks, please get in touch with Business Patent Law, PLLC.

Have another topic or question you would like Business Patent Law, PLLC to address in the blog? Please send us an email!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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Post Trademark Registration Junk Mail

Post Trademark Registration: Beware Fraud, Scam & Junk Mail

What is a Post-Trademark Registration Junk Mail Barrage?

In part, the post-Trademark Registration junk mail barrage is a type of direct mail marketing. (In the US, the estimated response rate for direct mail campaigns is 3.5% to 4.24%. Thus, direct mail can be an inexpensive way to obtain a customer and/or make a sale.) Direct mail campaigns continue to creep into postal boxes, some of which are honest and aboveboard and others that are not.

Following your Trademark Registration, your company may receive legitimate-looking “bills” or “invoices” by mail that appear to be related to your trademark registration. Those may be a scam. Here’s what you need to know:

A Trademark Registration Scenario 

Trademark Registrations are part of the Public Record.

Our marketing department initially filed three US Trademark Applications. About a year after filing the US Trademark Applications for the “Yes,” “No,” and “Maybe” Marks, our Louisville Company received three Trademark Registrations from the United States Trademark Office. Marketing and sales quickly added the ® to our labels and continued marketing and selling our products.

Our company’s protocol has been that the mailroom sorts the incoming mail and sends anything appearing to be an invoice to accounting for payment. Accounting was trained to look for suspicious invoices.

Within weeks of receiving our US Trademark Applications, unbeknownst to management, accounting paid several invoices that appeared to be related to United States Trademark Office business.

Those invoices appeared to be associated the US Trademark Office, but were not.

Types of Post Trademark Registration Solicitations

As a general rule, the US Trademark Office will not utilize the postal service to solicit payments from the Trademark Owner.

Under Title 15 of the United States Code, USPTO post Registration fees become due at five years, nine years, nineteen years, twenty nine years, etc. Any USPTO fee requested by a third party not associated with these dates is suspicious.

Solicitations attempting to induce the Trademark owner to pay fees may come in many ways. (Some third parties solicit the transfer of funds outside the United States, others solicit funds to roaming US postal box locations and some have apparent legitimate street addresses.)

  • Some solicitations are for actual services, albeit not those likely needed by the Trademark owner. (These are like the old yellow page ads for a regional rather than a local telephone book.)
  • Other direct mail campaigns induce the Trademark owner to actually pay for something in a country outside the United States while making the payment appear to be for something in the United States.
  • Still others encourage payment for some service in the United States, where the service is not actually needed to maintain the Trademark Registration in full force and effect.

If you have a question about the post-Trademark Registration barrage of mailed materials and junk mail, please contact Business Patent Law, PLLC., for guidance.

If you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

 

Office Action Made Final Patent Law

Office Action Made Final

What is an “Office Action Made Final” from the Patent Office?

Our Company received an Office Action Made Final from the Examiner, what does it mean and what do we do now?

In the Office Action Made Final, some of the Patent claims were allowed and some the Patent claims were rejected.

How Can We Respond to an Office Action Made Final?

In responding to the Office Action Made Final, some of the options for your business are:

  • Cancel the rejected claims and have your Patent Issue on the allowed claims
  • Cancel the rejected claims; have your Patent issue on the allowed claims; and file a Continuation-Type Application directed to the previously rejected claims before the Patent is granted
  • If circumstances permit, cancel the rejected claims; have your Patent issue on the allowed claims; and file a Divisional Application
  • File a Request for Continued Examination
  • Initiate an Appeal directed toward the rejected claims
  • Allow the Application to go abandoned

Another Option: The Pilot Program

37 Code of Federal Regulations (C.F.R.) §1.116 provides for the filing of a Request for Consideration under the After Final Consideration Pilot Program.

If the required conditions of 37 C.F.R. §1.116 are met, it provides a potentially less expensive route for responding to an Office Action Made Final than the above options.  Some of the conditions for using the Pilot Program are:

  • There must be an Office Action Made Final
  • Applicant must amend at least one independent claim that narrows the scope of the claim
  • A USPTO Certification and Request for Consideration under the After Final Consideration Pilot Program 2.0 Form must be filed with Applicant’s Response
  • Applicant’s Response must be filed using EFS-Web
  • There is no USPTO fee to request consideration under AFCP 2.0, but any other USPTO fee that is due must be paid at the time of the request consideration under AFCP 2.0
  • Applicant must to participate in any interview requested by the Examiner

The Law – 37 Code of Federal Regulations 

37 C.F.R. 1.116 reads:

Amendments and affidavits or other evidence after final action and prior to appeal.

 

(a) An amendment after final action must comply with §1.114 or this section.

 

(b) After a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913, but before or on the same date of filing an appeal (§ 41.31 or § 41.31 of this title):

 

(1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;

 

(2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or

 

(3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

 

(c) The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under § 1.135, or the reexamination prosecution from termination under § 1.550(d) or § 1.957(b) or limitation of further prosecution under § 1.957(c).

(d)

 

(1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.

 

(2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§ 1.113) in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.

 

(e) An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.

 

(f) Notwithstanding the provisions of paragraph (e) of this section, no affidavit or other evidence can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.

 

(g) After decision on appeal, amendments, affidavits and other evidence can only be made as provided in §§ 1.198 and 1.981, or to carry into effect a recommendation under § 41.50 (c) of this title.

If the law excerpt above seems confusing, we can help. We can assist your Company to understand what the notice you received says and what your options are under the law. Together we can develop a Response to the Office Action Made Final, for your best outcome.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.