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A Guide to Patent Application Preparation and Prosecution in the USA

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INTRODUCTION
 
My name is Steven W. Weinrieb, I am a patent attorney in the United States, and I specialize in preparing and prosecuting patent applications that deal with all fields of mechanical technologies. I started my career as a patent examiner in the United States Patent Office, and I have been in private practice for more than 30 years, having successfully obtained literally thousands of patents for our worldwide clients. Please feel free to consult and review my profile on LinkedIn.


 
A Guide to Patent Application Preparation and Prosecution in the USA

So, for the purposes of this presentation, we will be discussing the preparation of mechanical patent applications and their navigation through the United States Patent Office, as well as the parallels involved in the prosecution of corresponding patent applications in other countries around the world since, as is the case most often, the patent applications that we file in the United States are indeed filed as corresponding applications in other countries around the world, although the specific nuances of the particular patent practice within such other countries might in fact differ somewhat from the accepted practice in the United States.
 
THE ORIGINAL DISCLOSURE

So, to get started – a patent application must necessarily begin with a disclosure from the inventor or inventors. The disclosure should optimally be as clear and complete as possible so that you, as the patent practitioner, can certainly appreciate the basic invention. In addition, and in my opinion, after reviewing the disclosure by yourself in order to appreciate and comprehend the various features and structure of the basic invention, it is mandatory that you call and speak to the inventor or inventors in order to in fact appreciate all of the features of the invention – what are the inventors trying to achieve, why are they trying to achieve the particular objective or objectives by means of the particular invention, what the important features of the invention are, why did they do some things in a particular way, why did they not do such things in a different way – in my opinion, these things can only be accomplished by means of a thorough telephone conversation, and as usually happens, I often find that I will have many more questions for the inventors while I am actually drafting the patent application.

Very often, for example, the inventors may have illustrated something in their drawings that is not quite accurate – for example, in one drawing figure, they may have illustrated a particular piece of apparatus. Let’s say, for example, it is a fluid control system. In another drawing figure, they may have illustrated a schematic flow diagram of the fluid flows as controlled by means of the apparatus illustrated within the first drawing figure. Sometimes, the inventors may illustrate the flow diagram in a generally proper manner, but it may not quite agree with the illustrated apparatus or the written description of the apparatus, which the patent examiner might red flag and which may therefore pose a disclosure problem whereby modifications need to be made to the flow diagram such that the same truly corresponds with the apparatus figure and the written description. In addition, when speaking to the inventors and discerning why they formulated their apparatus in a particular manner and not in some other manner as you, as the practitioner, may have asked them about, they may not have thought of the alternative mode or embodiment of the invention as you have. In this case, it would be wise to include such an additional embodiment into the patent application for both patentably offensive and defensive reasons – offensively, once disclosed, you can claim that particular additional embodiment and therefore secure patent protection for it, and defensively, it prevents a potential competitor from fabricating the basic apparatus in this secondary mode or embodiment as a design around your original mode or embodiment.

If for some reason you were unable to obtain your patent, the public disclosure would prevent someone else from obtaining a patent in connection with the different embodiments or modes of the invention, whereby you would then still be able to manufacture the apparatus, because someone else’s patent would not prevent you from making, using, and selling the apparatus – remember, obtaining a patent does not necessarily permit YOU to make, use, and sell the patented invention – the patent provides you with the right to prevent OTHERS from making, using, or selling the patented invention. So if someone else obtains a patent on a similar apparatus, they can prevent you from making, using, and selling the apparatus. Therefore, it is critically important for you to obtain the patent and therefore prevent others from commercializing the invention, or for your disclosure to at least prevent others from obtaining a patent and then preventing you from making, using, or selling the particular invention.
 
THE PATENT APPLICATION
 
So, continuing on, after you have thoroughly discussed the invention with the inventor or inventors, you can start to draft the patent application. A patent application is basically a very carefully crafted story – it informs one as to the field of technology with which the patent application is concerned, why it was developed, what it is in fully descriptive language and illustrations, and what is claimed and protected. In fact, the main headings of the patent application are effectively self-explanatory. They are:
 
FIELD OF THE INVENTION – This section of the patent application briefly sets forth the broad area of technology within which, or to which, the present invention falls or is related.
 
BACKGROUND OF THE INVENTION – This section of the patent application describes, for example, known systems that are similar to the present invention and that effectively qualify as prior art. Usually, such patents or publications are briefly discussed as to their content and disclosures, and why, for example, despite the advances in the art that such prior art patent publications have demonstrated, there still exist problems or deficiencies within the art or particular area of technology, and hence, the development of the present invention has the objective of meeting and resolving such problems or deficiencies characteristic of the known prior art systems.
 
SUMMARY OF THE INVENTION – This section of the patent application briefly describes the present invention and sets forth its main features for accomplishing its objectives in rectifying the problems or deficiencies characteristic of the previously set forth prior art systems.
 
BRIEF DESCRIPTION OF THE DRAWINGS – This section of the patent application sets forth a brief description of each drawing figure describing the same as, for example, a front elevation view, a cross sectional view, a perspective view, and the like, of the apparatus or system or component parts thereof.
 
DETAILED DESCRIPTION – This section of the patent application fully describes all features of the present invention, including all of the components of the system, how they are structurally connected together, and how all of the components operatively co-operate together in order for the disclosed apparatus or system to function and achieve its operative objectives.
 
THE CLAIMS – This section of the patent application is essentially the most important part of the patent application, because the claims define what the metes and bounds of the patent are – they define what the protected invention is and precisely what others are prevented from making, using, and selling.
 
ABSTRACT OF THE DISCLOSURE – This section of the patent application is effectively a shortened version of the SUMMARY OF THE INVENTION and is intended to provide one with a quick synopsis of the invention.

Now, I do additionally note that with respect to the specification and claims of a patent application – the specification being everything in the written patent application, except for the claims - that while I have previously stated and characterized the claims as essentially being the most important part of the patent application, this is true in part, and not true in part for the following reasons:
 
First, you cannot claim anything that is not disclosed either within the specification or the drawings, wherein both the specification and drawings comprise the totality of your original patent disclosure. So, for example, if you claimed “a spring device operatively connected to the first support arm and the second support arm”, wherein you have previously introduced the first and second support arms into the claim, if you did not disclose the spring device in the specification or the drawings, you cannot claim it. And if you try to insert such into the specification or drawings, the examiner will probably object to such as comprising new matter because it was not within your original disclosure comprising the original specification and/or the drawings. However, if you did in fact note the spring device in the specification as operatively connecting the first and second support arms, but you did not illustrate the spring in any of the drawings, the examiner would probably permit you to insert the spring into the drawings, and claim the spring, without objecting to such as new matter because you did specifically describe such in the original specification, that is, within the original written disclosure. In a similar manner, if you illustrated the spring in the drawings as operatively connecting the first and second support arms, but did not mention the spring in the specification, the examiner would again probably permit you to amend the specification to include the spring because it was in fact illustrated within the original drawings, or in other words, within your original disclosure.

Therefore, the primary rule for drafting the specification is that it should be, and must be, as complete and accurate in all respects – in fact, it is even wise to effectively take things one step further – I do not believe the drawings should disclose anything that is not truly an operative part of the overall system, apparatus, or invention – this can include minor details, such as fasteners, washers, springs, whatever – either briefly describe them, or eliminate them from the drawings if, as I have said, they truly do not play any real part in connection with the invention and the operation of the various components thereof. I do not believe that there should be any “loose ends” or “red flags” where the examiner is going to ask “What are these things over here, and what do they do? You do not want to be in the position of effectively telling the examiner, “Oh, don’t worry about those, they really have no part in the invention.” If they have no real part in the invention, don’t even disclose them. This is very often the case with exploded view drawings.
 
Second, when I first started in practice, I drafted a patent application for one of the senior partners in the firm I was working for at the time and he reviewed it. It was, admittedly, not very good as it was my first attempt at writing a patent application, and so he discussed it with me and told me to rewrite it. In particular, if necessary, as we were facing a non-extendable deadline, he said to concentrate more on the specification than on the claims. I questioned him about that, stating that the claims were the most important part of the patent application, whereupon he cleverly informed me of the following rule: The most important part of a patent application going INTO the Patent Office is the specification, while the most important part of a patent application coming OUT OF the Patent Office is the claims. The reason for this is simple: going INTO the Patent Office, the specification is the most important part of the patent application because it must be complete and accurate, AND, once the patent application has been filed, the specification CANNOT BE CHANGED! Coming OUT OF the Patent Office, the most important part of the patent application is the claims because, as noted here in before, the claims are what define your patented and protected invention, however, during the entire course of the examination, and up until the application is officially allowed as a result of a Notice of Allowance having been issued and mailed, the claims can be changed!
 
Third, when beginning the writing of the patent application, a proper numbering system for the various system components should be adhered to. For example, when starting to prepare a patent application, one should begin to describe the first embodiment of the apparatus, whether there are one or more embodiments, with the generalized reference character of 100 and proceed in numerical order with 102,104,106…. There are several reasons for implementing this system.
 
First, enumerating the various components in the system in numerical order as the various components are in fact introduced or set forth in the specification permits one to refer back to the specification, in connection with a particular component, in a very simple and rapid manner. For example, if you are looking for the place in the specification where the component 158 was first introduced, and you see places in the specification where components 180 and 200 are already being discussed, you know that component 158 was introduced earlier in the specification.
 
Second, when writing subsequent parts of the specification, and reference is again made to component 158, you can easily refer back to it in order to readily recall what you named that component because you must maintain the same nomenclature for that particular component throughout the specification.
 
Third, by referencing the various components of the system by means of even numbered reference characters, built in “spaces” are established for subsequently inserting the description of a component you may have forgotten to specifically describe and inherently enabling you to provide it with a reference character. For example, if you are describing components 150 and 152, and later you realize you needed to describe an additional component which is structurally related to components 150 and 152, you can number the new component 151 without upsetting or rewriting your specification and/or amending the drawings.
 
PATENT OFFICE REJECTIONS
 
Patent Office rejections are usually one or more of three different kinds:
 
First, the examiner may reject one or more claims as being indefinite under 35 USC 112.
 
Second, the examiner may reject one or more claims as being anticipated by a single prior art reference under 35 USC 102.
 
Third, the examiner may reject one or more claims as being unpatentable or obvious in view of one or more references under 35 USC 103.
 
With respect to the rejection of one or more claims as being indefinite under 35 USC 112, sometimes the examiner doesn’t quite understand something in the specification. The examiner will never call you for an explanation, he will simply reject one or more claims as being indefinite under 35 USC 112, and/or additionally or alternatively, he may also object to the specification. As stated previously, however, if your specification is complete and accurate, you should not encounter any problems that cannot be overcome.

One example may be found within United States Patent 6,526,734. This patent is directed toward a palletized load film wrapping system, wherein there is disclosed a roll of wrapping film 38 and a counter weight 40 wherein the counterweight is necessarily supposed to be slightly heavier than, and therefore effectively offset the combined weight of the roll of wrapping film 38 along with film roll carriage 32 and the dispensing assembly 36. When I first discussed the invention with the inventor, he noted this to me but he did not know why the counterweight 40 had to be slightly heavier than the combined weight of the noted components, although he was sure that that was in fact the case, and that it was critically important. I told him I would think about it and we would both see if we could come up with the answer. Sure enough, I realized that, in a manner similar to unwinding or unrolling kitchen Saran wrap, or some other plastic wrapping, there is a certain inherent tension, frictional force, or adhesion generated between the layers of the plastic wrap which slightly inhibits the unrolling or unwinding of the film from the roll of film. And the inventor agreed that that was in fact the case in the present system. So we fully explained this in the specification, and during examination, the examiner rejected one or more of our claims, and objected to the specification, as not being clear and definite as to why the counterweight had to be slightly heavier than the combined weight of the other components. I then respectfully noted to the examiner our explanation in the specification, he agreed with the explanation, withdrew the rejection, and the application was allowed. So, the important lesson to be learned here is that you must try to anticipate questions the examiner may raise, and you must have a complete and accurate specification which can fully address any of the examiner’s potential questions.
 
With respect to the rejection of one or more claims as being anticipated by a single reference under 35 USC 102, I initially review the references and effectively compare them to the present invention in order to effectively determine how close the prior art is with respect to the present invention. If need be, I then actually refer to the office action to see how the examiner applied the various prior art patent references. Under 35 USC 102, the reference is theoretically supposed to disclose each and every feature that is claimed. Unfortunately, this is not always the case. I had one application many years ago where the examiner, whom I actually knew because he was in my group art unit when I was an examiner at the Patent Office, cited twenty seven (27) patents against the claims under 35 USC 102. In other words, the claimed invention was allegedly disclosed within every one of the twenty seven (27) cited references. I reviewed all of the references and it was my opinion that none of the twenty seven (27) references disclosed the claimed invention. So I called the examiner, and after exchanging pleasantries, I explained the invention, said that I respectfully did not believe any of the twenty seven (27) references was pertinent. He paused for a while, and then effectively said that he agreed with my assessment, that I should submit appropriate remarks to that effect, and that he would allow the case, which in fact he did. So, again, the lesson to be learned here is that an anticipatory rejection under 35 USC 102 is not always what it seems, and in lieu of agreeing with the examiner, perform your own assessment of the cited prior art.
 
Another interesting case was United States Patent 7,793,687, which deals with a rotary valve for inflating and deflating inflatable cargo bags. The examiner cited United States Patents 1,369,555 and 1,710,128 which did in fact disclose rotary valves which were quite similar to our client’s invention, however, our invention did operate a little differently. Accordingly, we amended the claims so as to specify how our invention operated differently, which language could not be met by the cited prior art patents, and the application was allowed. The lesson to be learned here is to try to understand or anticipate how the examiner thinks and how he could possibly construe the cited prior art. In addition, by means of your assessment, try to distinguish your invention from the cited prior art – while they may be similar, ask yourself how the present invention works differently from the systems of the prior art. By doing that, you can effectively counter any arguments he has, and if you are dealing with a reasonable examiner, you should prevail. Having been a patent examiner was an invaluable experience, because you do indeed learn how examiners think, what they are looking for in claim recitations, how they are likely to combine references, what they are looking for in convincing arguments, and you get to know, with firsthand knowledge, the rules of practice.
 
Lastly, with respect to the rejection of one or more claims as being unpatentable or obvious under 35 USC 103, obviousness is one of the most difficult concepts to understand. Many attorneys do not completely understand it, and many patent examiners do not completely understand it. There are many subtleties or nuances to the concept of obviousness. The concept of obviousness is based upon what the person having ordinary skill in the art (PHOSITA) would deem to be obvious.
 
In the famous case of KSR v. TELEFLEX, decided in 2007 by the Supreme Court of the United States, Justice Kennedy, speaking for the majority, stated that “A person [of] having ordinary skill in the art is also a person of ordinary creativity, not an automaton.” He acknowledged that his description of a person having ordinary skill in the art (PHOSITA) does not necessarily conflict with other Federal Circuit cases that described a PHOSITA as having "common sense" and who could find motivation "implicitly in the prior art”. Kennedy emphasized that his opinion was directed at correcting the "errors of law made by the Court of Appeals in this case" and does not necessarily overturn all other Federal Circuit precedent.
 
As you can imagine, there has been much discussion on the topic of obviousness, not the least of which has been: What has been the impact of the KSR decision on the question of obviousness? In my opinion, I do not believe much has changed – when I was a patent examiner, in order to implement a viable rejection of obviousness under 35 USC 103, teachings or “motivation” had to be at least strongly suggested within the prior art, and I, for one, believe that KSR has effectively reaffirmed that position.
 
An example of the above can be ascertained from a recent patent application that I successfully prosecuted and which is now a granted patent. It is United States Patent 7,908,997 which discloses a hybrid hot melt adhesive dispensing system wherein hot melt adhesives could be dispensed at a base location along a production line, and at a remote location along the production line in order to achieve different dispensing patterns at different locations along the production line. The examiner cited two references respectively disclosing the dispensing at a base location and at a remote location, however, no prior art was cited effectively showing the hybrid dispensing at both the base and remote locations. The examiner took the position that the combination of the base and remote locations was obvious – I obviously disagreed. We held an interview conference with the examiner’s supervisor, and after I stated my position to the supervisor, the first question that the supervisor asked the junior examiner was where was his motivation or teaching for combining the references and effectively making the claimed hybrid system obvious? The examiner admitted that he did not have any teachings or motivation in the cited prior art references, and the supervisor stated that if the junior examiner had no better prior art, he would have to allow the application, and accordingly, it was in fact allowed.
 
Another interesting application is United States Patent 7,938,776. In this case, the subject matter comprised a blood specimen glove wherein one of a blood specimen or reagent is to be deposited onto a first patch or region disposed upon one of the finger tip portions of the blood specimen glove other than the finger tip portion of the thumb finger of the glove, while the other one of the blood specimen or reagent is to be deposited upon a second patch or region upon the finger tip of the thumb portion of the blood specimen glove. The primary reference used by the examiner was United States Patent 4,473,079, which disclosed the two specimen and reagent regions on a specimen glove. However, one region was on a finger tip portion of the specimen glove, while the other region was positioned at the base of the thumb, not on the finger tip portion of the thumb. Accordingly, it was very awkward for one to bring the two regions together in order to cause a test reaction to occur between the specimen and the reagent, and in addition, better dexterity and control of the specimen and the reagent could be achieved between the two finger tip portions, in accordance with our invention, in order to effectively crush the specimen into the reagent in order to assure a good positive test result. Again, the examiner made an obviousness type rejection, but when confronted with the fact that he had no teachings or motivation suggesting that the specimen and reagent regions both be located upon the finger tip portions of the glove, he agreed to allowance.
 
A last example of a slightly different obviousness type scenario can be derived from the prosecution of United States Patent 7,707,802, which is concerned with film wrapping or packaging machines. In connection with such machines, it is often desirable, in addition to wrapping, for example, palletized loads in film wrapping or packaging, that the wrapping or packaging film be formed into a “rope” which effectively forms a belt or strap around the packaged or wrapped load. In order to achieve the film “rope”, the upper and lower edges of the wrapping or packaging film are effectively brought together. This is usually achieved by a pair of roller pulleys wherein the upper edge portion of the wrapping or packaging film is disposed within the groove of the upper pulley, while the lower edge portion of the wrapping or packaging film is disposed within the groove of the lower pulley. Consequently, when the roller pulleys are caused to approach each other, the width dimension of the wrapping or packaging film is effectively compressed, thereby forming the film “rope”. The invention also had a frustoconical portion upon a roller shaft within which the film “rope” could be disposed and maintained, and the examiner wanted me to insert this limitation into the main independent claim because the examiner believed that this feature was clearly patentable. I submitted that while that was true, we were entitled to broader claims wherein we effectively achieved the width contraction of the wrapping or packaging film into its “rope” formation utilizing only a single roller, and not requiring the use of two rollers. The examiner stated that the use of only a single roller was obvious. I disagreed and inserted an amended claim into the application reciting the use of only a single roller. Since the prosecution at this point in time was only after the first office action, I had the right to insert this amendment into the application and the examiner could not refuse entry of the amended claims. Accordingly, the examiner would have to in fact consider such amendments. The examiner apparently could not find any prior art disclosing the use of only a single roller in order to achieve a film “rope”, and therefore allowed the case. Again, the lesson here is that you have to understand the concept of obviousness and effectively implement the practice wherein you “push the envelope” as much as you can up to the line of obviousness in order to effectively obtain the best scope of coverage for your client.
 
MEANS PLUS FUNCTION
 
35 USC 112 states in part that “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
 
Unfortunately, in my opinion, court decisions in recent years have imposed restrictions upon this portion of 35 USC 112 whereby the means plus function language, in lieu of protecting the equivalents to the structure described in the specification, now apparently only protects the structure actually disclosed or described in the specification. Accordingly, in view of the effective erosion of the metes and bounds of the means plus function language, and the consequent loss in the scope or breadth of the claims protecting the invention and all equivalents thereof, the usage of such means plus function language has been slowly discarded and is not being used anymore as extensively as it once was.
 
REQUEST FOR CONTINUED EXAMINATION
 
Normally, during the prosecution of a patent application within the Patent Office, an applicant will have two opportunities to successfully achieve allowance of his invention. The first opportunity will be when the original application is filed and the original claims accompany the patent application for examination. The examiner will then search the prior art and most likely issue a rejection of the claims based upon the uncovered prior art. Sometimes, a first action allowance is issued, but such actions are, for the most part, rare. In response, then, to the first office action rejection, applicant(s) have the right to submit amended claims in order to afford themselves of the second opportunity to obtain allowance of the patent application. An interview with the examiner, or with the examiner and his supervisory or primary examiner, is highly advised and ordinarily extremely helpful in that, in most cases, the supervisory or primary examiner is needed to approve the application for allowance and presenting your arguments directly to the supervisory or primary examiner is often most beneficial in order to fully discuss the features of the invention and the differences of the same from what is disclosed within the cited prior art.

If circumstances are such, however, wherein an agreement cannot be reached at this time, such as, for example, you are possibly including a recitation in the amended claims that the examiner has not previously searched, or wherein, still further, the examiner did not fully appreciate the significance of a particularly claimed recitation whereby the examiner will research the claims, the examiner may issue another office action which, most likely, will be a final rejection. Once a final rejection has been issued, the applicant(s) no longer have the right to amend the claims in order to place the application in condition for allowance – it will be at the examiner’s discretion as to whether or not to enter the amendments and whether or not the amendments to the claims do in fact place the application in condition for allowance. Therefore, if the examiner refuses entry of the amended claims after the final rejection, applicant(s) can then file an RCE or Request For Continued Examination whereby the previously submitted claims after final rejection will in fact be entered and the examination process effectively begins anew. Alternatively, applicant(s) can effectively discard the amended claims submitted after the final rejection because the examiner has already indicated that those claims are not specific enough to obtain allowance, and therefore, applicant(s) can submit an amendment with the RCE which further amends the claims. In either case, the amended claims submitted with the RCE will in fact be entered, and the next office action will be a first office action. The lesson here then is that while allowance has not as yet been achieved, the filing of the RCE effectively moves the application along in the prosecution process with the ultimate goal of obtaining allowance.
 
PROVISIONAL PATENT APPLICATIONS
 
In my opinion, provisional patent applications are interesting and advantageous instruments by the means of which one can initiate the patent process. Provisional patent applications can be used to effectively establish a patent priority date which can subsequently be perfected by the filing of a non-provisional patent application or a PCT application if the non-provisional patent application or the PCT patent application is in fact filed within a one year period from the date of the filing of the provisional patent application. This one year period may then enable, for example, the inventor or corporation to raise the necessary funding, assess the commercialization of the invention, decide which foreign countries to enter to expand their patent protection, or the like. Several important points however should be noted in connection with provisional patent applications.
 
First, the provisional patent application must in fact be perfected, for example, by means of a non-provisional patent application or a PCT patent application within the aforenoted one year period, otherwise you cannot claim priority back to the provisional patent application.
 
Second, the provisional patent application will never be published or even known if the one year period lapses.
 
Third, the provisional patent application will never be examined and will never lead, by itself, to a patent and patent protection.
 
Fourth, and most important in my opinion, the provisional patent application should be as close to, as detailed, and as complete as possible, as the disclosure of a non-provisional patent application. Some entities believe that, for expediency and low cost bases or reasons, that a provisional patent application can be simply, quickly, and briefly cobbled together and filed. However, if the provisional patent application is very basic, effectively lacking in an enabling disclosure, it may not truly serve as a basis for priority for the subsequently filed non-provisional patent application or the PCT patent application, and therefore, the original one year earlier priority date may not in fact be able to be relied upon, if necessary.
 
AMERICA INVENTS ACT (AIA)
 
The AIA became fully effective in March 2013 – all applications filed after that date are subjected to the provisions of the AIA, although if applications have priority extending backwards before March 2013, they will be examined under pre-AIA conditions or provisions.
 
The most important change implemented by the AIA was the shift in US Patent Practice from the “first to invent” to the “first to file” system. Under the pre-AIA conditions, two similar applications would effectively be litigated within the Patent Office under interference proceedings, wherein a later filed application could prevail in seniority if certain conditions wer met. Under the new AIA procedures, interference proceedings have effectively been eliminated and now the first applicant to file for a particular invention is automatically the senior party, whereby his application or patent can be used as prior art against the later filed similar application.
 
Other important changes were also implemented by means of the AIA, among them, the requirement for an Application Data Sheet. In reality, the ADS does not provide any real new information into the application that was not already introduced, for example, by means of the oath or declaration, which is still required. However, an ADS is still required and must be completed within strict guidelines. For example, when completing foreign priority information, let’s say, for example, an original patent application was filed within a particular country, then a PCT application, and then a national stage US application was filed based upon the original foreign application and the PCT application, both the PCT and original application data must be provided upon the same sheet of the Application Data Sheet – if they are provided upon separate sheets, the priority will be denied. In addition, and counter intuitively, if you are filing a US national stage application based upon an original foreign application and a supplemental PCT application, the PCT application data is to be inserted into the DOMESTIC PRIORITY box even though it was foreign filed. The originally foreign filed application is to be properly inserted into the FOREIGN PRIORITY box.
 
Another nuance to properly completing an ADS is that if any corrections are necessary, a new ADS must be submitted and the changes must be indicated on the new ADS. So, for example, if something is to be deleted, it must be noted by black magic marker in brackets [ ], and if something new is added, it be underlined by black magic marker.
 
Still further, one new improvement enabled by an ADS is the deletion or addition of an inventor – pre-AIA procedures required you to petition the Patent Office for the change and to provide extensive reasons as to how an inventor was inadvertently included or excluded from the original filing. Under AIA, you simply file a new ADS, pay a required fee, and the process of exclusion or inclusion is effectively automatic.

For more information, see What it is Like Being a Patent Attorney: Patent Attorney Jobs.
 
ADDITIONAL INFORMATION RESOURCES
 
PUBLIC PROFILE ON LINKEDIN
 
http://www.linkedin.com/pub/steven-weinrieb/18/2a0/9b4
 
COMPANY WEBSITE
 
www.bestmechanicalpatents.com
 
COMPANY EMAIL
 
sweinrieb@gmail.com
 
COMPANY TELEPHONE
 
301-340-9343 (EAST COAST USA)
 
COMPANY FAX
 
301-762-6203 (EAST COAST USA)


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