Updates

Here are summaries of important legal or procedural changes that affect the latest edition of this product. If you want to check on the accuracy of any other information in the book, please follow the legal research instructions in the book or in Nolo's research manual, Legal Research: How to Find and Understand the Law.

• Changes in Patent Law and Procedure (Patent It Yourself, 11th Edition)
• New Patent Fees for 2005
• Changes in Patent Procedures, Mail Stops, and PPA Requirements

Changes in Patent Law and Procedure (Patent It Yourself, 11th Edition)

Patent It Yourself Blog Offers Updates

David Pressman, patent attorney and author of Patent It Yourself , has created a blog that provides updates regarding patent law, and the book itself. The blog, which is not managed by or affiliated with Nolo, can be found at www.patentityourself.blogspot.com.

Below are two issues that may affect readers of Patent It Yourself:

What You Say in Application and Amendments Can Be Used Against You

Some recent appellate decisions have relied on wording in the specification or amendments to limit the scope of the claims. Two recent rulings held that an object of the invention that recited a specific arrangement limited the scope of the claims to that arrangement so as to prevent a finding of infringement. (Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) and Vehicular Technologies Corp. v. Tital Wheel International, Inc., 212 F.3d 1377, 1380 (Fed. Cir. 2000).) Another decision held that even though some claims were limited to a pleated surface and some were not, since the Summary of the Invention in the specification and an attorney stated in an amendment that a surface was pleated, all claims would be limited to a pleated surface and therefore were not infringed. (C. R. Bard, Inc. and Davol, Inc. v. United States Surgical Corp., #04-1135 (2004 Oct 29).)

To avoid these problems I recommend the following changes:

• Omit the Objects and Advantages section entirely (many patent attorneys are now doing this) or don’t name it “Objects and Advantages.” Instead, call the section "Advantages."
• Include a disclaimer to introduce the Advantages section. One way to do this is as follows: “Accordingly the present invention may have one or more of the following advantages..."
• Write the Advantages section carefully so that you don't recite any specific details or arrangements that could be regarded as limiting -- for example, don’t state "It is an advantage to provide a console between the seats.” Instead state, “It is an advantage to provide a more accessible console.” Be sure that your invention and any possible variation will meet every advantage. Also use “weasel” words so that no advantage will be too broad or absolute -- for example, don’t state, “One advantage is to avoid the problem of..." Rather state “One advantage is to reduce the problem of..."
• Keep the Summary section and the Abstract general. Do not include any details of the invention in these sections that you would not want to be used to limit the invention.
• In the Remarks portion of any Amendment, never make an argument for the patentability of any claim that refers to any features that are not in that claim -- for example, if you’re arguing the patentability of a claim that simply recites a surface, don’t state that the cited prior-art patent to Smith doesn’t show a pleated surface. If you’re arguing the patentability of a narrower claim that recites a pleated surface, be sure to first argue the patentability of the broader claim without mentioning the pleated surface and then state that the narrower claim is additionally or independently patentable because it recites pleats, which Smith doesn’t show.

Correction to Form 10-3 in Patent It Yourself

Note that in the filled-out Form 10-3 (Fig 10K on page 10/23 of Patent It Yourself ), some of the amounts in Item 2 (“EXCESS CLAIMS FEES”) are erroneous. Under “Total Claims,” the “Fee ($)” reads “$9” but should read "$25." The “Fee Paid ($)” reads “$36” but should read "$100."

Under “Indep. Claims,” the “Fee ($)”reads “$42” but should read "$100." The “Fee Paid ($)” reads “$42” but should read "$100."

Back to Top

New Patent Fees for 2005

Below is a listing of the USPTO's new patent fees effective December 8, 2004. The USPTO's new filing fees are broken into three parts (filing, search, and examination). These components are itemized in the USPTO's Fee Transmittal Form (PTO/SB17), but since the total of all components must be paid at the time of filing, the listing below includes only the total fee. A slash (/) separates large entity/small entity fees:

Basic Utility Patent Application Filing (incl. search and exam fees): $1,000/500
Basic Utility Patent Application Electronic Filing (incl. search and exam fees): $1,000/425
Each Independent Claim Over Twenty: $50/25
Each Independent Claim Over Three: $200/100
Multiple Dependent Claim: $360/180
Design Patent Application Filing (incl. search and exam fees): $430/215
Plant Patent Application Filing (incl. search and exam fees): $660/330
Utility Patent Application Issue: $1,400/700
Design Patent Application Issue:  $800/400
Plant Patent Application Issue: $1,100/550
Utility Patent Maintenance: 3.5 years: $900/450
Utility Patent Maintenance: 7.5 years: $2,300/1150
Utility Patent Maintenance: 11.5 years: $3,800/1900
Extension to Reply to Office Action (1 month): $120/60
Extension to Reply to Office Action (2 months): $450/225
Extension to Reply to Office Action (3 Months): $1,020/510
Petition to Revive Unintentional Abandoned Application: $1,500/750
Appeal, filing notice of appeal or brief: $500/250
Appeal, request for oral hearing: $1,000/500

Note, there is now a "large application surcharge" for applications (utility, design, or PPA) that have over 100 sheets of specification and drawings.

The Government has not changed the publication fee or the surcharge for filing a maintenance fee in the grace period. Check the USPTO’s web site at www.uspto.gov for current USPTO and PCT fees.

Back to Top

Changes in Patent Procedures, Mail Stops, and PPA Requirements

USPTO Establishes Electronic System for Recording Assignments

The USPTO now allows customers to record patent assignments electronically using the new Electronic Patent Assignment System (EPAS). Customers must provide a scanned copy of the signed assignment in .tif, .pdf, or .txt format, with 300 dpi resolution. The USPTO server will automatically convert .pdf and .txt files to the .tif format. The recording fee can be charged via credit card. For more information, go to the EPAS web page at http://epas.uspto.gov.

USPTO Stops Sending U.S. Patent Copies With Office Actions

As of June 30, 2004, the USPTO -- in an effort to reduce expenses and move to an all-electronic system -- will no longer send copies of cited U.S. patent references and published patent application references with Office Actions (OAs). The USPTO will continue to send copies of cited foreign patent references and non-patent references. In other words, if you receive an OA that cites U.S. patent references, you must obtain copies of the cited references yourself.

To obtain copies of U.S. patents, you can download them from the USPTO’s web site, download them from Patent Fetcher (see below), or download them from the USPTO’s Private PAIR (Patent Application Information Retrieval) system. These methods are explained in Chapter 6 of Nolo's Patent It Yourself.

(Warning: Obtaining access to Private PAIR requires quite a bit of work, and installation of the USPTO’s electronic filing software (three separate files) has allegedly caused some computers to crash so badly that their hard discs had to be reformatted. Unless you can make a ghost backup of your hard disc and can restore the backup, we advise against installing this software. For an explanation of the PAIR system, see Chapter 10 of Patent It Yourself.)

Mail Stop Changes

The USPTO has made several mail stop changes. The following mail stops have been deleted and should no longer be used:

• Mail Stop Application Number
• Mail Stop CPA
• Mail Stop Design
• Mail Stop Non-Fee Amendment
• Mail Stop PGPUB-ABD
• Mail Stop Patent Application
• Mail Stop Provisional Application.

Mail Stop Non-Fee Amendment has been changed to Mail Stop Amendment, and Mail Stop PGPUB-ABD has been changed to Mail Stop Express Abandonment. For a complete list of all current mail stops, go to www.uspto.gov, Mailing Addresses, Special Mail Stops for Patent Mail.

Patent Fetcher Provides Dual Service

Patent Fetcher, the patent downloading service, has created two services: one that’s free and one that's fee-based. The latter is faster and offers foreign patents. Go to http://free.patentfetcher.com for the free service.

PPA Must Simply Describe Invention in Statutory Class

In addition to clearly teaching how to make and use the invention, a provisional patent application (PPA) must cover an invention that's in a statutory class. For example, for software inventions, this means that the invention must have a tangible, concrete, and useful result and not be a pure algorithm.

The description should be written in as simple terms as possible so that a lay judge can understand it (or can be easily taught to understand it). If you're drafting a PPA for a technical invention, assume the reader knows nothing about the field and start simply, gradually moving up to the minimum technical level necessary.

Corrections as to Certain Paper Dimensions

The 10th edition of Patent It Yourself lists incorrect dimensions for the paper formats accepted at the UPSTO. The following corrections should be made to the dimensions provided on page 10/9:

1. In the letter-size diagram, the width of the "sight" or useable area should be labeled 6 7/8", not 6 15/18."

2. Under the same diagram, the dimensions should read "(8.5" x 11" or 216 mm x 279 mm)" rather than "(8.5" x 11" or 216 mm x 269 mm)."

3. In the A4 diagram, the width of the sight area should be labeled 6 5/8" rather than 6 15/18".

Format for Amendments

There is a change to the format used for amendments, as discussed in Chapter 13 of the 10th edition of Patent It Yourself.  When amending specification paragraphs and when amending claims with "(Amended)" format, you should no longer use single brackets to indicate deleted matter. Deleted matter should be indicated by strikethroughs. Added matter should be indicated by underlining. However, for deletions of five words or fewer, deletions can alternatively be indicated by double brackets instead of strikethroughs.

Be advised, as well, that the new format for amendments is being strictly enforced by the USPTO. To be sure your amendment complies with the new format, please go through the following checklist and make sure you have presented the amendment in the proscribed format:

• A list of contents is on page 1.
• The Specification and Drawing Amendments (if any) start on respective new pages.
• The Claim Amendments (if any) start on a new page.
• The Remarks start on a new page. 
•  The specification is amended by replacing whole paragraphs with words to be deleted struck through and words to be added underlined.
• All claims that were ever in the application are listed in numerical order.
• The number of every claim is followed by one of the seven required parenthetical expressions (Original, Currently Amended, Previously Presented, Canceled, Withdrawn, New, and Not Entered).
• For Canceled and Withdrawn claims, only the claim number without the text is presented.
• For claims in the Currently Amended format, words to be deleted are struck through and words to be added are underlined.

Change in USPTO Phone Numbers

Most of the USPTO's phone numbers have changed to numbers in the 571 area code. For current listings, call the USPTO's General Information number at 800-786-9199.

Back to Top