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.

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