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How to Pass Comment

1. Be able to determine if and what filing date will result from a given set of papers.

2. The general rule is that papers are treated as filed on the day that the papers are actually received by the PTO, no matter how they get there.

**No the Exceptions


What can you not fax?

New patent applications.

Any document that requires certification.

3. Nothing in color.

4. No Request for Re-Exam

5. No correspondence of you practicing

6. No PCT

7. Anything subject to a secrecy order.


What time do you get for a fax?

Time of receipt at patent office.


What do you do if you are behind the time zone?

Express Mail.


What requires a WET signature?

Submitting a paper version of the credit card payment form.


When must you file on EFS by on the deadline day?

9 PM on the West Coast

12 AM East Coast


Filing Date v. Filing Receipt

Filing Receipt acknowledges your filing date.

Filing Date is specs, claims and drawings (only specs but cannot add later if you leave out others)


What happens when you file an Incomplete Application?

The PTO mails a Notice of Missing Parts (claims, drawings) accompanied by a Notice of Incomplete Application.


Reference Filing

Filing by just referencing certain things as your specification.
No money, claims or drawings.

To perfect, MUST;
- pay fee
- present specs, claims and drawings
- provide certified copy of referenced material


Can you file a CPA/CON/DIV/CIP before the application is complete?



Actions you can take without paying a fee?

1. File a protest.

2. File a Petition to Make Special in applications based on illness, age;

3. Access issued, published, and certain abandoned files;

4. File a timely response to an Official Action or Restriction Requirement;

5. Timely file an IDS;

6. Conduct an Interview;

7. Obtain a Certificate of Correction to correct a Patent Office mistake;

8. File a Supplemental Declaration or Supplemental Amendment;

9. File a Petition Requesting Withdrawal of an Incorrect Holding of Abandonment;

10. File comments in response to the Examiner's Reasons for Allowance;

11. File a Citation of Prior Art


Scale of Petition Fees

They escalate as the type of request.

inventorship correction -> making an application "special" -> suspension of the rules


How do deposit accounts work?

You put money in there for them to deduct.


What goes into your typical Filing fee?

1. A fee for filing, searching, and examination; AND

2. A surcharge for each independent claim in excess of 3; AND

3. A surcharge for each claim (I or D) in excess of 20; AND

4. A surcharge if any multiple dependent claims are included; AND

5. An application size fee if spec and drawings together are over 100 pages long (increased, thereafter, in 50 page increments); AND

6. A surcharge for late filing of oath or declaration or filing fee.


What is the help for small and micro entity?

Small gets 50% off

Micro gets 75% off

**Petition fees are stuck!!!


What qualifies for a small entity?

1. Solo Inventor under no obligation to assign, grant or convey or license.

2. Set up as a not for profit

3. No more than 500 people as employees.


What qualifies for a micro entity?

1. Applicant or inventor has not been names on more than four previously file US non-provisional patent applications. **Doesn't count previous employment

2. Applicant or inventor, in the calender year preceding the year which the fee is to be paid, had a gross income exceeding three times the median household income for that calender year.

3. If applicant's majority of income comes from higher education employer.

4. Applicant or inventor has assigned, granted, conveyed or is under contract to give the rights to a institution of higher education.


The most common fees which are NOT reduced for Small Entity or Micro.

1. Petition and processing fees;

2. Document supply fees;

3. Certificate of Corrections fees

4. Request for Reexamination Fees;

5. International (PCT) fees.


A Certificate of Mailing can be used for any paper filed in the Patent Office EXCEPT the following:

1. New Patent Applications (either 1.53(b) or (d) including CON/CIPS/DIV;

2. Papers filed in an interference which are directed to be filed by hand;

3. Agreements settling an interference;

4. Any PCT Papers


Remember how to get a filing date





Key to look for when determining small entity status?

Who is going to own the patent.

If inventor owns a separate entity with too many people it wont go against the fact that they could be an independent inventor.