Managing Notices of Allowance, Issue Fee Payment and Continuation - - PowerPoint PPT Presentation

Managing Notices of Allowance, Issue Fee Payment and Continuation Practice

How to Manage Final Office Actions and Responses and RCE Practice

• Presenters:
• Ann McCrackin, President, Black Hills IP, LLC
• Peter Rebuffoni, Manager of Legal Operations, Schwegman Lundberg & Woessner,

P.A.

• Joni C. Simaytis, Business Process Supervisor, Intellectual Property Department,

Caterpillar Inc.

Where does a USPTO Notice of Allowance

• ccur in the prosecution process?
• A typical patent prosecution cycle includes the following basic steps:
• Application is filed
• A restriction requirement may be issued
• A non-final and/or final rejection is issued
• Responses to the non-final and/or final rejections are filed
• Eventually, the application is either allowed, or the application is continued or

abandoned

What are requirements when a USPTO Notice

• f Allowance (NOA) is received?
• Once a NOA is received, the following items must be addressed:
• Any missing oaths/declarations must be filed with USPTO before issue fee is

paid

• Any drawing corrections must be made before issue fee is paid
• Any other formal requirements must be attended to (e.g., sequence listing)
• Any prior art that was recently received, or previously received and just now

identified, must be submitted

• Any examiner interview summaries should be submitted
• The issue fee must be paid within three (3) months of the mailing date of the

NOA

• Before the patent is issued, any divisional or continuation applications

must be filed

What are optional actions that can be taken when a USPTO NOA is received?

• A Rule 312 can be submitted typically to correct typographical errors
• File continuations or divisionals
• File an RCE to continue prosecution

What are typical docketing requirements for a USPTO NOA?

• The core docketing requirement for a Notice of Allowance is a:
• Three month deadline to pay issue fee.
• Typical additional docket dates are:
• One month docket date to review for any prior art newly received or not not cited
• Docket one month for any formalities – drawings/oaths-declarations/sequences listings,

etc.

• Docketing for filing continuations/divisionals – covered later in more depth
• Once issue fee is paid, docket a reminder for receipt of issued patent

Example Docketing Entries for NOA

• Continuation/Divisional Decision - 2 months from Allowed Date
• Issue Fee - 3 month Final Deadline from the Allowed Date
• Formal Drawings Due - 3 month Final Deadline from the Allowed Date
• Declaration Due - 3 month Final Deadline from the Allowed Date
• Response to Examiner's Amendment - 3 month Final Deadline from the Allowed

Date

• Response to Examiner's Reason for Allowance - 3 month Final Deadline from the

Allowed Date

• Check Original Letters Patent Received – 6 months from the Allowed Date

What is typical Law Firm workflow docketing requirements for a USPTO NOA?

• The typical docketing workflow for law firm when a Notice of Allowance is

received:

• Report of allowance to client/counsel
• Administrative tasks put on staff docket
• Substantive analysis on attorney docket
• Report sent/assembled according to docketed process
• Verify whether the list of inventors is accurate/correct in view of the allowed claim set
• Obtain instructions to pay issue fee, or other
• Pay the issue fee
• File any required continuations or divisionals

What is typical corporate in-house IP department workflow docketing requirements for a USPTO Notice of Allowance?

• The typical workflow docketing of a client/corporation for a Notice of Allowance

is:

• Receive report of NOA from law firm
• Call/meeting with law firm to discuss options, or provide written instructions to law firm OR
• Call/meeting with inside executives to discuss options
• Determine budget constraints
• After decision, update budget projections with any expenses authorized
• Delegate/authorize and/or pay issue fee
• In-house IP counsel may also evaluate the allowed claim set to verify it meets

the strategy/goal of the application, covers a commercial product, etc. If not this can guide the in-house counsel when deciding whether to file a CON or even an RCE to continue prosecution and revise the claims.

Example Law Firm Checklist for Receipt

• f NOA
• Verify whether the following are needed:
• Corrected Application Papers or Formal Drawings
• Summary of Examiner Interview / Response to an Examiner’s Amendment
• Inventor’s Oath/Declaration and an updated ADS
• Verify that the allowed claims and any Examiner’s amendment are correct
• Verify whether the client/assignee/licensee has changed and whether the entity

status is correct

• Verify whether the Examiner has initialed and returned all SB/08 or 1449 forms
• Verify whether any references/prior art in file still need to be cited in an IDS
• If application has a foreign priority claim, have certified copies of the priority

documents been supplied to the PTO

• Are there related pending family members that are eligible for Patent

Prosecution Highway (PPH) escalation in view of the allowed U.S. claims?

Example Law Firm Checklist for Payment

• f Issue Fee
• Confirm and review any documents to be filed at or before payment of the issue

fee, possibly including:

• Examiner Interview Summary / Response to Examiner’s Amendment
• Comments on Reasons for Allowance
• Corrected Application Papers / Formal Drawings
• Inventor’s Oath or Declaration and an updated ADS
• Fee Address communication
• Verify whether the client's Entity status (and applicable fees) as noted on the

PTOL-85 are correct.

• Confirm that all fees are being paid and deposit account authorization for any

additional fees due is clearly noted

• Confirm that any continuing application are being filed concurrently or are

docketed for filing soon thereafter

Use of patent analytics to make prosecution decisions – ANY ANALYTICS HANDY HERE- FILE CONTINUATION IS BIG DECISION POINT